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 I

UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
Before the Honorable Paul J. Luckem
Chief Administrative Law Judge
In the Matter of
CERTAIN ELECTRONIC DEVICES WITH
MULTI- TOUCH ENABLED TOUCHPADS
AND TOUCHSCREENS

Investigation No. 337-TA-714

COMPLAINANT ELAN MICROELECTRONICS CORP.'S
MEMORANDUM IN SUPPORT OF ITS MOTION FOR
PARTIAL SUMMARY DETERMINATION OF CLAIM CONSTRUCTION

TABLE OF CONTENTS

TABLE OF AUTHORITIES
STATEMENT OF FACTS

1.

iii
1

A.

The Parties

l

B.

Background of the Technology

1

C.

The '352 Pateht

3

D.

Previous Litigation

.4

II.

ARGUMENT

7

A.

Claim Construction Legal Principles

7

B.

The Level of Ordinary Skill

9

C.

Disputed Terms in The '352 Patent

9

D.

"Identify a first maxima in a signal corresponding to a first finger"
Should Be Construed to Mean "identitY a first highest absolute
value in a first set of values derived from the compiling of a first
finger within the touch sensor"

10

The Steps of Method Claim 1 Do Not Require Any Order of
Operation

12

"Identify" and "In Response To" Are Common English Terms
That Need No Construction

15

The specification Clearly Discloses and Links Copious Structure
to the "means for selecting an appropriate control function"
Limitation (claim 19) and Therefore the Claim Is Not Indefinite

16

The Specification Discloses and Links Structure to the "means for
detecting a distance between said first and second maxima" (claim
24)"

21

The specification Clearly Discloses and Links Structure for the
"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)

23

E.
F.
G.

H.

1.

1.

III.

The specification Clearly Discloses and Links Structure for
"means for calculating first and second centroids corresponding to
said first and second fingers." (claim 30)
CONCLUSION

25
27

11

TABLE OF AUTHORITIES

Cases
02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1362-63 (Fed. Cir. 2008)

8

3M Innovative Props., Co. v. Avery Dennison Corp.,
350 F.3d 1365, 1374-75 (Fed. Cir. 2003)

13

AllVoice Computing PLC v. Nuance Commc 'ns, Inc.,
504 F.3d 1236, 1248 (Fed. Cir. 2007)

12, 16, 17,20,21,23,25

Altiris, Inc. v. Symantec Corp.,
318 F.3d 1363, 1369-70 (Fed. Cir. 2003)

13

Bell Atl. Network Servs., Inc. v. Covad Commc'n. Group, Inc.,
262 F.3d 1258, 1268 (Fed. Cir. 2001)

8

Daiichi Sankyo Co., Ltd. v. Apotex, Inc.,
501 F.3d 1254, 1257 (Fed. Cir. 2007)

9

Ekchian v. Home Depot, Inc.,
104 F.3d 1299, 1303 (Fed. Cir. 1997)

11

Embrex, Inc. v. Service Eng'g Corp.,
216 F.3d 1343, 1347 (Fed. Cir. 2000)

15

Finisar Corp. v. The DirecTV Group, et ai,
523 F.3d 1323, 1340 (Fed. Cir. 2008)

20

Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003)

20

Interactive Gift Express, Inc. v. Compuserve Inc.,
256 F.3d 1323, 1342-43 (Fed. Cir. 2001)

13

Med. Instrumentation & Diagnostics Corp. v. Eleckta AB,
344 F.3d 1205, 1214 (Fed. Cir. 2003)

20

Mentor HIS, Inc. v. Med. Device Alliance, Inc.,
244 F.3d 1365, 1380 (Fed. Cir. 2001)

15

NeoMagic Corp. v. Trident Microsystems, Inc.,
287 F.3d 1062, 1074 (Fed. Cir. 2002)

8

iii

Northrop Grumman Corp. v. Intel Corp.,
325 FJd 1346, 1354 (Fed. Cir. 2003)

11

Phillips v. AWH Corp.,
415 FJd 1303, 1312 (Fed. Cir. 2005)

7, 8, 11

SRI Int'! v. Matsushita Elec. Corp. ofAm.,
775 F.2d 1107, 1118 (Fed. Cir. 1985)

8, 12

Vitronics Corp. v. Conceptronic, Inc.,
90 FJd 1576, 1582 (Fed. Cir. 1996)

8

Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
442 FJd 1322, 1326-27, 1330-31 (Fed. Cir. 2006)

8

WMS Gaming, Inc. v. Int'l Game Tech.,
184 FJd 1339, 1349 (Fed. Cir. 1999)

17
Statutes

35 U.S.c. § 112(6)

16,20,21,23,25

IV

I.

STATEMENT OF FACTS
A.

The Parties

Elan is a leading designer of specialty microcontroller-based semiconductor
products, including input devices for computers, such as controllers for computer mice,
optical computer mice and touch pads. Elan's innovations have received numerous
awards. For example, in 2002 Elan was named both one of the 500 Fastest-Growing
Technology Enterprises in Asia by Deloitte Touche Tohmatsu and one of the best
companies in the world with under $1 billion in revenue by Forbes Magazine. At the
2009 Computex computer and electronics trade show in Taipei, Taiwan, Elan's
transparent touchpad product was given the Best Choice of the Year award among all
products displayed, and was also named the Best Choice of the Year in the Peripheral
Products category. Elan's Smart-Remote™, which includes Elan's proprietary touch
sensitive input technology, was named the Best Choice ofthe Year in the Digital
Entertainment category.
Apple designs, imports and sells electronic devices, including mobile phones,
personal media players, computers, and peripheral devices such as computer mice.

B.

Background ofthe Technology

Prior to the filing of the '352 patent, a variety of touch sensitive computer input
devices had been developed. See Declaration of Sean P. DeBruine in Support of Elan
Microelectronics Corporation's Opening Claim Construction Brief ("DeBruine Dec!."),
Ex. A (U.S. Patent No. 5,825,352 ('''352 patent")) at 1:19-47; Declaration of Robert
Dezmelyk in Support of Elan Microelectronics Corporation's Motion for Partial
Summary Determination of Claim Construction ("Dezmelyk Dec!."), Ex. 5 (U.S. Patent
No. 5,764,218 ("'218 patent")) at 1:37-41 (stylus tablets and touchpads). The known
technologies included resistive touch sensors, optical touch sensors and capacitive
touch sensors. DeBruine Dec!., Ex. A at 1: 18-32. A more detailed description of the

1

operation of the resistive and capacitive touch sensing technologies is provided in the
Declaration of Robert Dezmelyk filed herewith.
In the early 1990s, two trends coincided to make touch-sensitive input devices
important in the computer industry. First, graphical user interfaces such as the Apple
Macintosh and Microsoft Windows operating systems were becoming commonplace.
Systems running such interfaces required a user input device that could manipulate the
cursor on the screen, select menu choices and issue commands to act on objects on the
screen. In most systems, cursor control was performed with a mouse, or similar
mechanical input devices such as trackballs. DeBruine Dec!., Ex. A at 1: 18-32; see

also Dezmelyk Decl., Ex. 5 at 1:24-43. Second, portable computers were becoming
small and inexpensive enough to gamer significant market acceptance. One problem in
the design of portable computers using a graphical user interface was the need for a
user input device to control the cursor. A separate external device, such as a mouse,
was unacceptable for laptop computers. Many early laptops included a trackball
pointing device in the computer housing. Trackballs, however, had a tendency to
become dirty and wear out and were difficult to operate. For these reasons, starting in
1994, the flat, solid state touchpad became a popular mechanism for cursor control
input in portable computers.
Touchpads lend themselves well to controlling simple cursor movement. The
user simply moves his or her finger on the touchpad to move the cursor a
corresponding distance and direction on the computer screen. The form factor and
limited size of the touchpad, however, presented usability problems, especially
compared to the computer mouse to which many laptop users were accustomed from
using desktop computers. Controlling the cursor precisely was often difficult. For
example, it was difficult to position a cursor onto the arrows provided to scroll the
display in many applications. In addition, pressing mechanical buttons to perform

2

operations usually accomplished with a mouse by clicking a mouse button required a
user to make awkward movements. Often, the user would have to lift his or her
pointing finger off the touchpad to click a button. Dezmelyk Dec!., Ex. 5 at 2:16-19.
This made operations that require both moving a cursor and clicking a button, such as
selecting blocks of text or selecting and dragging an object, particularly challenging.

Id. at 2:20-41. The patents-in-suit describe and claim aspects of touch-sensitive input
devices meant to address these and other perceived deficiencies.
One early solution to this problem was to employ tapping gestures on the touch
sensor surface to emulate a button press, or other control input. DeBruine Dec!., Ex. A
at 11 :24-28. In such gestures, the user could position the cursor, and then lift and
quickly tap his or her finger. Such a gesture would register as a button click. Id.; see
also Dezmelyk Dec!., ~ 25. In addition, two taps in quick succession could emulate a
double click, and a tap followed by a touch down with motion could initiate the
dragging of an object on the screen. Id.
The '352 patent was filed on January 4, 1996 and issued October 20, 1998. The
'352 patent discloses and claims technology that is a significant advance and
fundamental to the multi-touch user interfaces now found in many computers and
portable electronic devices: the ability to detect the presence of two or more fingers or
objects and their locations and to use that information to perform control functions
within a user interface.

C.

The '352 Patent

The '352 patent recognized shortcomings in the use of a single finger with
tapping gestures. DeBruine Dec!., Ex. A at 1:40-2:15. Those drawbacks included, for
example, the fact that in certain instances the cursor would need to be moved to a
specific location on the screen so that a particular function could be chosen with a
button press. By lifting and tapping the finger, the cursor was likely to move out of

3

position, frustrating the user's attempt to control a computer program. Id. at 1:60-2:14.
To overcome these shortcomings, the '352 patent discloses that the detection oftwo or
more fingers simultaneously on the touch sensor may be used, along with contact
duration and movement, to provide a rich and useful set of control functions. Id. at
2: 18-4: 16. To select an icon, for example, the user can position the cursor over the
icon by moving one finger, and then briefly tap the touchscreen with a second finger.
The touchscreen controller interprets this second contact as a press and release of a
mechanical mouse button. Id. at 2:62-3:1. In addition, the user could touch the
touchscreen with two fingers simultaneously and move these fingers vertically to scroll
up or down in an application, or move both fingers horizontally to scroll side-to-side in
an application. Id. at 13 :36-44. The ability to detect two or more fingers makes these
and many other user input commands possible, opening up new worlds for application
designers. The method claimed in the '352 patent works by scanning the sensors of the
touchpad and measuring the capacitance at each sensor. Id. at 58-61. The device's
controller or software on the computer then analyzes the measurements to determine
local "maximas" indicating each finger, and a local "minima" or valley between the
fingers. Id. at 6:26-38.

D.

Previous Litigation

The '352 patent was the subject of an earlier litigation between Elan and
defendants Synaptics, Inc., ProStar Computer and Avaratec, Inc. before the U.S.
District Court for the Northern District of California ("the Synaptics case"). Also at
issue in the Synaptics case were four patents owned by Synaptics. During the course of
that litigation certain terms of the' 352 patent claims were construed. In its April 6,
2007 Claim Construction Order the District Court construed the terms "scanning the
touch sensor," and the terms "identifY a first maxima ..." "identify a minima" and
"identifY a second maxima... " DeBruine Dec!., Ex G (Claim Const. Order). The

4

District Court rejected Synaptics' proposals as, inter alia, based on the details of the
disclosed embodiment and not consistent with the claim terms and broader disclosure
in the '352 patent. Id at 14. Thus, the Court rejected Synaptics' proposed construction
of "scanning the touch sensor" which required measuring the traces in the touch sensor
and assigning them a scan order. The District Court also rejected Elan's proposed
construction as overbroad, and adopted the construction to which the private parties
here now agree. Similarly, the District Court rejected Synaptics' overly narrow
construction of "maxima" as a specific point where the measured values cease to
increase, and begin to decrease, and "minima" as the specific point where the measured
values cease to decrease and begin to increase as inconsistent with the patent.
The Synaptics Court did not separately construe the term "identify" or "in
response to." In the context of arguing that it did not infringe the patent, however,
Synaptics argued that its products did not identify a minima. In those products, the
controller algorithm examined the scan data and wrote a value of binary "01" in a bit
vector where the minima was located. Further processing then created a data structure
with values only identifying the two maxima, which were used to provide a finger
count. DeBruine Decl., Ex. H (October 26,2007 Summ. J. Order) at 14. While that
"0 I" value was never further processed, the Court found that it was sufficient to
"identify" the minima. Id.
Elan is currently involved in litigation with Apple in the U.S. District Court for
the Northern District of California involving the '352 patent, one other Elan patent and
two patents asserted by Apple ("the Apple case"). Prior to filing their claim
construction statement in that case, the parties discussed whether they could agree to
adopt the construction of any of the claim terms from the Synaptics litigation.
However, at no time did Apple advocate that all of that Court's constructions should be
adopted. On the eve of the deadline for the parties to file their Joint Claim

5

Construction Statement, Apple proposed new constructions for the elements "identify a
first maxima ... ", 'identify a minima... " and "identify a second maxima... " In
particular, Apple for the first time proposed to alter the Synaptics construction to
restrict these steps to the analysis of "a finger profile taken on an axis." There was
another change in the Joint Claim Construction Statement filed the next day. In
Apple's new proposed constructions, the proposed constructions did not include a
requirement that the step of "identify a minima" take place in order after the step
"identify a first maxima." It did, however, include a requirement that the step of
"identify a second maxima" follow in order after the "identify a minima" step.
DeBruine Dec!., Ex. D (Joint Claim Const. Stmt.). Apple later noticed the discrepancy,
claiming it has intended to include the requirement that the three steps be performed in
order; Elan disagreed, stating that it intended no order of steps. The parties filed an
Amended Joint Claim Construction Statement to reflect those changes, as well as
certain other changes. Id., Ex. E.
On June 23, 2010 the District Court in the Apple case conducted a Markman
hearing on the '352 patent and the three other patents at issue in that case. Those
proceedings, and the preceding briefing, were limited to 10 claim terms selected from
the four patents at issue. For the '352 patent, the District Court considered the terms
"identify and first maxima... " "identify a minima... " and "identify a second
maxima... " as one term. It also considered the terms "identify" and "in response to"
and the means-plus-function element "means for selecting an appropriate control
function ... " in claim 19.
During the claim construction process in the Apple case, including the
Markman hearing, much of the discussion revolved around the term "profile" from the

Synaptics claim construction order, and in particular whether that construction should
be further limited to a "profile taken on an axis." In other words, the parties were

6

essentially debating the construction of the previous claim construction, rather than the
terms actually used in the patent claims. As will be discussed below in more detail, the
patent expressly says that it is not limited to analyzing a finger profile "taken on an
axis" to identify the maxima and minima. Rather, it expressly says that the analysis
may be through the data set in a direction other than along a coordinate axis. In order
to make clear that the patent allows for an analysis of all of the data points, and is not
limited to an analysis of only the x values or only the y values, Elan here proposes a
construction different from what it proposed in the Apple matter. In particular, rather
than dispute the meaning of the earlier claim construction, Elan has proposed a
construction that makes clear the parties' dispute regarding the data from which the
"identify" steps may use. As such, Elan proposes that "identify"... encompass an
analysis of the "set of values" derived from the scanning process. Elan also proposes to
modify its position from the Apple case in one other aspect. In the Apple case both
parties adopted the Synaptics definition of "maxima" as a "peak value." On further
consideration, as discussed below, that phrasing may be ambiguous, and potentially
raises and issue of claim differentiation, as certain dependent claims expressly limit the
maxima to "peaks." Elan has therefore proposed constructions here that more clearly
point out the parties disagreements on the meaning of the claim terms, resolves any
lingering ambiguity from the constructions adopted in the Synaptics case and most
closely aligns with the claim language and the patent's specification and file history.

II.

ARGUMENT
A.

Claim Construction Legal Principles

Claim interpretation begins with the plain language of the claim. Phillips v.

AWHCorp., 415 FJd 1303,1312 (Fed. Cir. 2005) (en banc). Generally, there is a
heavy presumption in favor of the ordinary meaning of claim language rather than an
unconventional meaning. Bell Atl. Network Servs., Inc. v. Covad Commc 'n. Group,

7

Inc., 262 FJd 1258, 1268 (Fed. Cir. 2001). The person of ordinary skill is deemed to
read the claim terms in the context ofthe specification. Phillips, 415 F.3d at 1313.
The specification is the single best guide to the meaning of a disputed term and the
specification "acts as a dictionary when it expressly defines terms used in the claims or
when it defines terms by implication." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576,1582 (Fed. Cir. 1996).

It is the district court's role and duty to resolve fundamental disputes about the
meaning of claim terms. See 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521
FJd 1351, 1362-63 (Fed. Cir. 2008) (where parties present a fundamental dispute
regarding the scope of a claim term, it is the court's duty to resolve that dispute and
failure to construe the term is error). Construing claim terms with reference to the
accused devices violates a fundamental tenet of claim construction. SRI Int 'I v.

Matsushita Elec. Corp. ofAm., 775 F.2d 1107,1118 (Fed. Cir. 1985) (en banc);
NeoMagic Corp. v. Trident Microsystems, Inc., 287 FJd 1062, 1074 (Fed. Cir. 2002).
This does not mean, however, that the Court has to avert its gaze from the accused
products and the infringement dispute in order to reach an unbiased construction.
Doing so can result in a claim construction that simply rephrases the infringement issue
rather than helping the finder decide infringement. It is appropriate for the Court to use
its understanding of the accused products, in order to arrive at a claim construction that
the finder of fact can readily apply in its infringement analysis without relying on
expert testimony about what any claim term means. See Wilson Sporting Goods Co. v.

Hillerich & Bradsby Co., 442 F.3d 1322, 1326-27, 1330-31 (Fed. Cir. 2006) (while
courts should not construe claims with an aim to include or exclude an accused
product, knowledge of that product "provides meaningful context for the first step of
the infringement analyses, claim construction").

8

B.

The Level of Ordinary Skill

Because patent claims are to be construed to reflect the understanding of an
ordinary worker in the appropriate filed, a first step in the claim construction process is
to determine the level of ordinary skill in the relevant technology. Factors to be
considered are the complexity ofthe technology, the pace oftechnological
advancement in the field, and the education and experience of those working in the
area. Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007).
Here, the parties are largely in agreement regarding the appropriate level of skill. For
all of the patents, one of ordinary skill would have an undergraduate degree in electrical
engineering or computer science with class work on electrical circuits, and about three
years of experience in the design and operation of touch-sensitive input devices. One
with a more advanced degree may have less practical experience. See Dezmelyk Decl.,
'\[3. Dr. Von Herzen's opinion is similar. See DeBruine Decl., Ex. F (Von Herzen
Depo) at 23:21-24:14.

C.

Disputed Terms in The '352 Patent

Claims I and 18 are the independent claims of the '352 patent. Claim 18 is
representative and reads as follows, with the disputed terms emphasized:
A touch sensor for detecting the operative coupling of multiple fingers
comprising:
means for scanning the touch sensor to (a) identifY afirst 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 secondfinger
following said minima, and

means for providing an indication ofthe simultaneous presence oftwo fingers
in response to identification ofsaidfirst and second maxima.
DeBruine Decl., Ex. A at 16:14-23.

9

D.

"Identify a first maxima in a signal corresponding to a first
finger" Should Be Construed to Mean "identify a first highest
absolute value in a first set of values derived from the compiling
of a first finger within the touch sensor"
Elan's Proposal

Apple's Proposal
Identify a first peak value in a finger
profile taken on an axis obtained from
scanning the touch sensor (emphasis
added)

Identify a first highest absolute value in a
first set of values derived from the
coupling of a first finger with the touch
sensor

The first recited step in the method claimed in the '352 patent for detecting the
number of fingers on a touch pad begins "scanning the touch sensor to (a) identify a
first maxima in a signal corresponding to a first finger ..." The parties agree that
"scanning the touch sensor" means "measuring the values generated by a touch sensor
to detect operative coupling and determining the corresponding positions at which
measurements are made."
Elan's proposed construction is true to the language of the claim and the
specification. It uses the plain meaning of "maxima"as a highest value in a set of
values. It recognizes that the maxima may be a negative number, depending on the
sensor circuitry. See DeBruine Dec!., Ex. C (August 18,1997 Amendment) at 8. It
differs from the claim construction Elan had earlier proposed in two respects. First, it
substitutes "highest absolute value" for the term "peak." This is to clarify that the
maxima need not be surrounded by lower values, but rather that it may be greater to or
equal to the surrounding values. For example, the patent teaches, in Fig. 6-1, step 230.
Last, the test for the maxima is whether the current value is greater than or equal to its
neighbor. In other words, a maxima may be part of a "plateau." This construction also
avoids the issue of claim differentiation, because claims 7 and 21 expressly limit the
maxima to "peaks."
Apple's construction adds a requirement, not found in the claim language, that

10

the finger profile be "taken on an axis." Nothing in the claim language or intrinsic
evidence supports adding this limitation to the claim term. Apple is improperly asking
the Court to read limitations from a preferred embodiment into the claims to narrow
them. Under any normal circumstance this would be an improper construction. See
Phillips, 415 F.3d at 1325 (claims not limited to preferred embodiment). The Federal

Circuit has many times explained that while claim terms are construed in the context of
the specification, courts must take care not to limit the claims to specific embodiments
described in the specification. See, e.g., Ekchian v. Home Depot, Inc., 104 F.3d 1299,
1303 (Fed. Cir. 1997) (the Federal Circuit has repeatedly "cautioned against limiting
the claimed inventions to preferred embodiments or specific examples in the
specification"); Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1354 (Fed.
Cir. 2003) (reversing claim construction).
In this case, Apple is asking for limitations to be added to the claim even though
the specification clearly states that the invention is not so limited. While the' 352
patent describes an exemplary embodiment, in which the scanning occurs along the X
or Y axis, DeBruine Dec!., Ex. A at 7:1-6, after describing that "exemplary
embodiment" the patent goes on to explain that:
While the foregoing example describes identification of
minima and maxima in the X and Y directions [e.g. along
the X or Y axis] it will be apparent that an analysis along
a diagonal or some other angular direction may be
preferred in some instances, and is still within the scope
of the present invention." Id. at 11:11-15. The patent
further emphasizes that "sensors may be scanned
sequentially or concurrently, depending on the hardware
implementation.
Id. at 7:36-37 (parenthetical added).

In light ofthis very clear statement, one of ordinary skill in the art could not
possibly conclude that the invention required scanning for a finger profile "on an axis."
On the contrary, one of ordinary skill would realize that a matrix of sensors could be

11

configured and scanned in various ways depending on the application, so long as the
electrical values can be measured and maxima and minima identified. As a matter of
law, "it is not necessary to embrace in the claims or describe in the specification all
possible forms in which the claimed principle may be reduced to practice." SRI Int 'I,
775 F.2d at 1121; see also AllVoice Computing PLC v. Nuance Commc'ns, Inc., 504
F.3d 1236, 1248 (Fed. Cir. 2007). Apple's attempt to rewrite the claims should not be
permitted.

E.

The Steps of Method Claim 1 Do Not Require Any Order of
Operation

The parties dispute the construction of "identify a minima ... following a first
maxima" and "identify a second maxima ... following said minima" in claims I and
18.

Claim term
identify a minima following
the first maxima

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

Apple's Proposal
Identify the lowest value in
the finger profile taken on
said axis that occurs after
the first peak value and
before another peak value is
identified
After identifying the lowest
value in the finger profile
taken on said axis, identify
a second peak value in the
finger profile taken on said
axIS

Elan's Proposal
Identify a lowest absolute
value that follows the first
maxima

Identify a second highest
absolute value in a set of
values derived from the
coupling of a second finger
with the touch sensor that
follows the minima

The parties have two disputes regarding these claim elements. First, Apple has
inserted the same "taken on an axis" limitation in these terms as it did to the previous
term "identify a first maxima ..." For the reasons discussed above, that limitation
should not be read into these terms either. The parties also dispute whether there is a
requirement that the first maxima, minima and second maxima be identified in that

12

order; that is, whether the step of identifying the minima must be performed in
sequence after the step of identifying the first maxima and before the step of identify
the second maxima. Reading the patent in light of the specification, it would be error
to impose any such limitation. First, absent a clear indication in the claim itself, there
is no requirement that the steps of a method claim be performed in the order recited.
Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir.
2001). Interactive Gift describes a two-part test for determining whether a method
claim recites a particular order of steps. First, the claim language is examined to
determine whether, as a matter of grammar or logic, the steps must be performed in
order. If there is no such requirement in the claim language itself, the rest ofthe
specification is examine to determine whether it directly or implicitly requires such a
narrow construction. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. Cir.
2003).
Applying that standard to claim I, it is clear that there is no requirement that the
step of "identifying the second maxima ..." be performed after the step of "identifying
the minima ..." While the claim does use the phrase "following" that does not imply
that the step follows in time. Rather, "following" refers to the location of the second
maxima in relation to the minima. In other words, taking one maxima as the "first
maxima," the claimed method requires that the other, or "second" maxima, be
separated from the first by a minima. Thus, the "minima" is described with relation to
the "first" maxima, and the second maxima must follow the minima. See, e.g., 3M
Innovative Props., Co. v. Avery Dennison Corp., 350 F.3d 1365,1374-75 (Fed. Cir.
2003) (use of "first," "second," etc. does not imply that steps are performed in that
order). According to the grammar ofthe claim, "following" and "after" refers to the
spatial relationship ofthe minima and the second maxima to the "first" minima. It does
not refer to the order in which that relationship is determined.

13

The specification is consistent with this understanding. Here, the patent makes
clear that the order of steps are not important. The steps of identifying the maxima and
minima are part of a "scanning" process. The patent makes clear that "sensors can be
scanned sequentially or concurrently, depending on the hardware implementation."
DeBruine Decl., Ex. A at 7:36-37. It also says that "the X and Y compute processes
may be performed sequentially in either order or concurrently." Id at 11 :6-10. As
such, the patent makes clear that the order of steps is not important to the invention.
Elan recognizes that the language Apple proposes that would impose an order
of execution of the steps of "identifying a first maxima," "identifying a minima," and
"identifying a second maxima" is taken in part from the claim construction order
entered by Judge Breyer in the Synaptics case involving Elan's predecessor in interest,
Elantech Devices Corp. See DeBruine Decl., Ex. G. Elan also recognizes that this
language was taken from a claim construction proposed by Elantech. In the previous
action, however, the order of the scanning steps was not important to the claim
construction process or the determination of infringement. To the extent step order was
discussed, Elantech made arguments consistent with Elan's positions here. In its Reply
Claim Construction Brief for U.S. Patent 5,825,352, Elantech argued:
The use of the term "following" according to the plain
language itself merely explains the relative locations of
the maxima and minimum, as having "a minima
following the first maxima" and "a second maxima ...
following said minima"
DeBruine Decl., Ex. I at 5. While this argument was made to rebut a specific point not
at issue here - i.e., that the term "scanning" required the storage and examination of
measured values in the order of the sensors (e.g., taken along an X or Y axis) it
anticipates Elan's current position that the claim terms do not impose any sequence of
steps. Therefore, Apple's proposed construction should be rejected as inconsistent with

14

the specification, which illustrates that the claim tenn "following" merely describes the
relative location of the two maxima and one minimum. It does not require scanning in
any particular order. The use of the tenn "following" according to the plain language
itself merely explains the relative locations of the maxima and minimum, as having "a
minima following the first maxima" and "a second maxima ... following said
minima." Id.
Similarly, and for the same reasons, the tenn "identify a minima following the
first maxima" should be construed to mean "identify a lowest absolute value that
follows the first maxima" and the tenn "identify a first maxima in a signal
corresponding to a first finger" should be given the meaning: " identify a second
highest absolute value, in a set of values derived from the coupling of a second finger
with the touch sensor, that follows the minima."

F.

"Identify" and "In Response To" Are Common English Terms
That Need No Construction

Claim Term
Identify

Apple's Proposal
"recognize a value to be"

Elan's Proposal
plain meaning

In response to

"after and in reaction to"

plain meaning

The tenns "identify" and "in response to" appear in the longer claim term Elan
identified for construction, discussed above. These common words need no
construction. The purpose of claim construction is to understand and explain the scope
of claims. Embrex, Inc. v. Service Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000).
Language that is clear on its face needs no construction, because no further
understanding or explanation is needed. See, e.g., Mentor HIS, Inc. v. Med. Device

Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001) (district court properly declined to
construe claim tenns "irrigating" and "frictional heat" and did not err by instructing the
jury to give these tenns their ordinary meanings). The words "identify" and "in

15

response to" are even more common and general than the terms at issue in Mentor.
What is more troubling than Apple's attempt to substitute words in an attempt
to paraphrase the claim terms chosen by the inventors is the interpretation that Apple,
or at least its expert, has adopted as an additional gloss on that improper interpretation.
For example, while Apple proposes that "in response to" means "after and in reaction
to," Dr. Von Herzen understands Apple's definition to mean "after and in direct
reaction to" such that no intervening steps or events may take place. DeBruine Decl.,
Ex. Fat 109:9-110:9. In other words, Apple appears to propose this unnecessary
construction so that it can later construe its construction to require a limitation found
nowhere in the claim or the specification. That attempt should be rejected.
Similarly, Apple's expert would interpret "identify" to mean "recognize to be"
which in tum could well require that a value is written into memory. Id at 102:15105:8. Again, there is no basis on which to provide Apple the opportunity to present
expert testimony to further construe its construction to add spurious limitations to the
claims if the Court accepts Apple's construction. The term "identify" means to
identify, and "in response to" means in response to.

G.

The specification Clearly Discloses and Links Copious Structure
to the "means for selecting an appropriate control function"
Limitation (claim 19) and Therefore the Claim Is Not Indefinite.

Claim 19 depends from claim 18, and adds the requirement of a
means for selecting an appropriate control function based on a combination of a
number of fingers detected, an amount oftime said fingers are detected, and any
movement of said fingers.
!d., Ex. A at 17:37-42. Both parties agree that this element is a "means-plus-function"
element that is governed by 35 U.S.c. § 112(6). Construction of such a claim element
involves two steps. First, the Court must determine the claimed function. Second, the
Court must identify the corresponding structure in the written description that performs
the claimed function. See AllVoice Computing, 504 F.3d at 1240. Here, the parties
16

agree that 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." DeBruine Dec!., Ex. E (Amended Joint
Claim Const. Stmt.) at 8.
Apple's Proposal
The recited function is selecting an
appropriate control function based on a
combination of a number of fingers
detected, an amount oftime said fingers
are detected, and any movement of said
fingers.

Elan's Proposal
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 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.

Apple contends that the specification does not disclose a corresponding structure and
that the limitation is therefore indefinite. Id. Apple could not be more wrong.
Where the structure for a means-plus-function element involves a computer or
processor, the computer or processor itself is not the corresponding structure. Rather, it
is the processor programmed to execute an algorithm that performs the claimed
function. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999). The patentee need only disclose adequate defining structure to render the
bounds of the claim understandable to one of ordinary skill in the art. AllVoice
Computing, 504 F.3d at 1245. When a specifically-programmed processor is the

structure, there is no need to disclose the specific program code if software were linked
to a specific function and one skilled in the art would know the kind of program to use.

Id. One of ordinary skill would understand that the structures in the specification

17

linked to this function are the Multiplexor 45, Capacitance Measuring Circuit 70,
Analog to Digital Convertor 80, Microcontroller 60 and/or software, firmware or
hardware performing the claimed function, and their equivalents. See Dezmelyk Decl.,
'\1'\128-30.
The specification provides numerous examples of how the combinations of
fingers the number of fingers, the movement of the fingers and the time the fingers are
present can be used in the claimed selecting of appropriate control functions. Many
such sequences are shown in Figs. 7A-F. DeBruine Decl., Ex. A. Those functions,
mapped to the illustrated gestures, can include: a second finger tap mapped to a select
function, id. at 13 :8-11; two fingers moving in unison to mapped to a "drag" function,
id. at 13: 19-22; two fingers briefly tapping the surface can be mapped to a double click
of the left mouse button or a middle mouse button, see id. at 13:23-31; a three finger
tap can be mapped to a right mouse button click to call up a context-sensitive menu, id.
at 13:32-37; and three fingers moving can be used to control a scroll function, id. at
13:36-44. The patent also states that the invention allows the implementation of
control functions that go beyond conventional mouse functions, to include, for example
an "ink" function or even to implement a musical keyboard. Id. at 3:47-4:26. There is
no dispute that, as of the filing of the '352 patent, those skilled in the art could readily
construct and program a touchpad that could detect the movement of fingers in contact
with the touch sensor. See Dezmelyk Decl., '\I 31. There is also no dispute that one of
ordinary skill in the art could determine the time duration of any such contact. See
DeBruine Decl., Ex. F at 38:2-10. As the above examples show, the '352 patent
teaches one skilled in the art how to determine the number of fingers present on the
touchpad.
The '352 patent further teaches, with detailed exemplary algorithms and
instructions, how to implement one such control function. For example, the algorithm

18

described in Fig. 8 illustrates a program that implements the gestures shown in Figs.
7F-1 and 7F-2. Id., Ex. A at 13:59-61. This flow chart determines the number of
fingers present on the touchpad and finger movement and determines whether to report
the button as up or down (steps 915 and 925) and to report motion to control the cursor
(step 930). Id. at 13:59-15:11. As such, one of ordinary skill in the art would very
clearly understand that the scope of claim 19 includes the well-known firmware or
software programmed to select 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 other structure corresponding to this limitation includes the multiplexor,
capacitance measuring circuit and analog to digital converter that provide signals from
which the microcontroller, or software on the host device, can determine the presence
of fingers on the touchpad, the amount of time the fingers are detected and any
movement of the fingers. See id. at 5:20-55 ("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");

id. at 7:1-3 (" ... the operation of the system of Fig. 2 is controlled in either firmware,
software or hardware."); id. at 7:29-33 ("In some instances, driver software executing
on the host may ascertain the existence of finger movement, while in other instances
including the exemplary embodiment described herein the determination of finger
movement occurs in firmware in the pointing device."); id. at 15:64-16:5 (" ... this
aspect ofthe invention is directed to the ability to identifY and process various
sequences in which one or more fingers are either absent or present, interspersed with
the motion or lack of motion of the finger or fingers across the touch sensor, to evaluate
those sequences either locally or via software on the host, and to report appropriate
signals to cause cursor movements or control functions to occur in applications

19

programs or operating environments."). Thus, the patent discloses and links this
hardware, along with firmware or software programmed to perform the claimed
function, as the corresponding structure.
Because there is ample structure disclosed, this claim is not indefinite. A claim
will be found indefinite only where one skilled in the art would be unable to recognize
the structure in the specification and associate it with the corresponding function in the
claim. AllVoice Computing, 504 F.3d at 1241; see also Finisar Corp. v. The DirecTV
Group, et ai, 523 F.3d 1323,1340 (Fed. Cir. 2008) (citing WMS Gaming, 184 F.3d at

1349) ("The patent must disclose, at least to the satisfaction of one skilled in the art,
enough of an algorithm to provide the necessary structure under § 112 ~ 6. In the case
where the corresponding structure is disclosed as logic, the algorithm in the
specification need only disclose "adequate defining structure to render the bounds of
the claim understandable to one of ordinary skill in the art." AllVoice Computing, 504
F.3d atl245 (citing Med. Instrumentation & Diagnostics Corp. v. Eleckta AB, 344 F.3d
1205, 1214 (Fed. Cir. 2003) ("[H]ere there would be no need for a disclosure of the
specific program code if software were linked to the converting function and one
skilled in the art would know the kind of program to use."); see also Intel Corp. v. VIA
Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003) (the internal circuitry of an

electronic device need not be disclosed in the specification if one of ordinary skill in
the art would understand how to build and modify the device) This algorithm can be
expressed "as a mathematical formula, in prose, or as a flow chart, or in any other
manner that provides efficient structure." Finisar, 523, F.3d at 1340. Here, one of
ordinary skill in the art would understand that the written description of the '352 patent
discloses structure corresponding to the function of choosing an appropriate control
function based upon a combination of a number of fingers detected, an amount of time
the fingers are detected and any movement of the fingers. Dezmelyk Dec!., ~~ 28-30.

20

As such, the claim can be understood by one skilled in the art, and would be understood
to encompass the structure Elan has identified.

H.

The Specification Discloses and Links Structure to the "means
for detecting a distance between said first and second maxima"
(claim 24)"

Claim 24 depends from claim 18, and adds the requirement of a
means for detecting a distance between said first and second maxima.
DeBruine Decl., Ex. A at 18:14-16. Both parties agree that this element is a "meansplus-function" element that is governed by 35 U.S.C. § 112(6). Construction of such a
claim element involves two steps. First, the Court must determine the claimed
function. Second, the Court must identify the corresponding structure in the written
description that performs the claimed function. See AllVoice Computing, 504 F.3d at
1240. Here, the parties agree that the recited function is "detecting a distance between
the first and second maxima." DeBruine Decl., Ex. E at 9. Again, Apple claims that
there is no disclosed structure and that the claim is therefore invalid as indefinite. To
the contrary, the specification discloses and links adequate structure to allow one of
ordinary skill in the art to understand the claim limits.

Apple's Proposal
The recited function is detecting a distance
between said first and second maxima.

Elan's Proposal
The recited function is detecting a distance
between the first and second maxima and
equivalents thereof.

Because the specification does not disclose
a corresponding structure, this limitation is The corresponding structure includes the
indefinite.
structure of claim 18 and firmware,
software or hardware that determines the
distance between the location ofthe first
maxima and the location of the second
maxima, and equivalents thereof.

See, e.g. 3:21-26, 6:59-67.

21

The patent points out and associates structure corresponding to the claimed
function of "detecting a distance between the first and second maxima." First, the patent
discusses the reason for determining that distance. For example, it can be used to ensure
that two identified maxima are two fingers, and not artifacts or other inaccurate data. It
does so by checking that the maxima are neither too far apart nor two close together. Id.,
Ex. A at 6:59-67. The distance may be used as an input to a control function, such as
using the distance between two fingers to set line width or other variable values. Id. at
3:21-26.
The patent states that "operation of the system is controlled in software, firmware
or hardware. Id. at 7:1-3. The patent gives several examples of algorithms to illustrate
the novel aspects of the invention. See id., Figs. 5, 6, 8 and 9. The purpose of those
algorithms, and in particular the X compute and Y computer loops, is to calculate finger
location and determine whether a second finger is present. Id. at 7:43-48. While those
algorithms do not illustrate the step of calculating the distance between two points
identified as maxima, there was no need to make such an explicit disclosure. By stating
that the algorithm could be modified to include these steps, the patent informs one of
skill in the art of the bounds of the claim.
Determining the distance between two points on the touchpad was more than well
known to those skilled in the field. Rather, that is the chief purpose of all touchpads.
The control algorithm for every touchpad operating in relative mode first and foremost
determined the present position ofthe finger, compared it to the last detected position,
and calculated the distance between the two points. Dezmelyk Decl., ~ 33. Such a
calculation is shown in Fig. 5, where finger movement is determined by calculating the

22

distance between two points on the touchpad. Id. Apple's argument, if adopted, would
force applicants for patents to disclose the specific steps necessary for a computer to
perform eighth grade mathematics. Certainly this is the level of well-known detail that
the patent laws, and the patent office rules, say need not and should not be included in
the specification.

I.

The specification Clearly Discloses and Links Structure for the
"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)

Claim 26 depends from claim 18, and adds the requirement of a
means for providing a click function in response to the removal and
reappearance of said second maxima within a predetermined period of time.
DeBruine Decl., Ex. A at 18:21-24. Both parties agree that this element is a "meansplus-function" element that is governed by 35 U.S.C. § 112(6). Construction of such a
claim element involves two steps. First, the Court must determine the claimed
function. Second, the Court must identify the corresponding structure in the written
description that performs the claimed function. See AliVoice Computing, 504 F.3d at
1240. Here, the parties agree that the recited function is "providing a click function in
response to the removal and reappearance of said second maxima within a
predetermined period oftime." DeBruine Decl., Ex. Eat 10. Again, Apple claims that
there is no disclosed structure and that the claim is therefore invalid as indefinite. To
the contrary, the specification discloses and links adequate structure to allow one of
ordinary skill in the art to understand the claim limits.

23

Elan's Proposal
Apple's Proposal
Because the specification does not disclose The corresponding structure includes the
a corresponding structure, this limitation is structure of claim 18 and firmware,
indefinite.
software or hardware that provides a click
function in response to the removal and
reappearance of said second maxima within
a predetermined period oftime, and
equivalents thereof.
See, e.g. Fig. 7; 2:38-4:13; 7:1-5; 11:2416:5.

The '352 patent discusses the utility of using the second finger to invoke a
"click" function and distinguishes the patented invention from the prior art. The patent
recognizes that the prior art used a single finger to move the cursor. Id., Ex. A at 11:2425. In the prior art, when that finger is tapped (that is, removed and reapplied within a
predetermined amount of time) various control functions are invoked. Id. at 11:25-28.
As discussed above, the prior art is replete with examples of touchpads in which the
length oftimes between contacts is used to emulate a button click. See supra Part LB;
see also Dezmelyk Dec1.,

~~

24-26. Thus, there is no dispute that algorithms to

determine when a finger is removed and then reappears on the touchpad were very well
known. Again, there was no need for the patent specification here to point out in
excruciating detail every algorithm that would result from the various gestures disclosed
in the patent. Here, the patent illustrates a novel concept - using the presence of two
maxima separated by a minima - to determine the presence of two fingers. The patent
teaches that this program loops continuously. To include in the control of such a
touchpad a routine that monitors the number of fingers present on the touchpad over
time, detects the removal and reappearance of the second maxima within a

24

predetermined number of scan cycles and provide a "click" function when that condition
is met.
J.

The specification Clearly Discloses and Links Structure for
"means for calculating first and second centroids corresponding
to said first and second fingers." (claim 30)

Claim 30 depends from claim 18, and adds the requirement of a
means for calculating first and second centroids corresponding to said first and
second fingers.
DeBruine Decl., Ex. A at 18:44-46. Both parties agree that this element is a "meansplus-function" element that is governed by 35 U.S.C. § 112(6). Construction of such a
claim element involves two steps. First, the Court must determine the claimed
function. Second, the Court must identify the corresponding structure in the written
description that performs the claimed function. See AIlVoice Computing, 504 F.3d at
1240. Here, the parties agree that the recited function is "calculating first and second
centroids corresponding to the first and second fingers." DeBruine Decl., Ex. E at 11.
Again, Apple claims that there is no disclosed structure and that the claim is therefore
invalid as indefinite. To the contrary, the specification discloses and links adequate
structure to allow one of ordinary skill in the art to understand the claim limits.

25

Apple's Proposal
The recited function is calculating first and
second centroids corresponding to said
first and second fingers.

Elan's Proposal
The recited function is calculating first and
second centroids corresponding to said first
and second fingers.

Because the specification does not disclose The corresponding structure includes the
a corresponding structure, this limitation is structure of claim 18 and hardware,
indefinite.
firmware or software that calculates the
centroids ofthe measured values
corresponding to the first and second
fingers and equivalents thereof.

See, e.g., Figs 6 and 9, 10:31-51.
As with the previous "means-plus-function" elements, there is clear and adequate
disclosure of corresponding structure to those skilled in the art. First, the patent
discusses the calculation of centroids as a step in the control algorithms used as
examples. See id., Ex. A, Fig. 6-2, steps 220 and 295 and Fig. 9-2, steps 220 and 295.
As the patent explains, those algorithms calculate one centroid for all of the detected
capacitance, such that for two fingers the centroid would "jump" to approximately the
mid-point of the two fingers. Id. at 10:31-40. The patent goes on to disclose a second
embodiment in which the centroids are calculated for each maxima, such that multiple
centroids will be calculated when multiple fingers are applied. As such, one of ordinary
skill in the art would understand the "means for calculating first and second centroids
corresponding to said first and second maxima" to mean hardware logic, software or
firmware that calculates the centroids of the measured values corresponding to the first
and second fingers, and equivalents thereof.
Again, it was well within the knowledge of those skilled in the art to program
such software or firmware, or create such logic. Calculating a centroid is a very wellknown part of touch sensor controllers. See Dezmelyk Dec!., ~~ 18, 20 and 32, Ex. 1
26

(Boie). Such a calculation is expressly shown in the patent. In order to adapt steps 220
and 295 to the alternate embodiment of claim 30, all one of skill in the art need do is
substitute the range of sensor locations to correspond to the "first maxima" and repeat
the calculation for the "second maxima." Id,

~

32. In other words, rather than analyzing

all of the measured locations, the formula would be adopted to examine the range of
values surrounding each maxima. Id.,

~

33. Apple's claim that there is no corresponding

structure again ignores the disclosure of the patent as it would be understood by those
skilled in the art.

III.

CONCLUSION

For the foregoing reasons, the construction of the disputed claim terms proposed
by Elan are consistent with the claim language, the written description and file history of
the '352 patent and the understanding of those skilled in the art. For those reasons, the
construction of these terms proposed by Elan should be adopted.

27

DATED: July 14,2010

Yitai Hu
Sean P. DeBruine
Elizabeth H. Rader
Helen Su
Jennifer Liu
ALSTON & BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4004
Tel.: [phone]
Fax.: [phone]
Paul F. Brinkman
Adam D. Swain
ALSTON & BIRD LLP
The Atlantic Building
950 F Street, NW
Washington, DC 20004-1404
Tel.: [phone]
Fax.: [phone]

Counsellor Complainant
ELAN MICROELECTRONICS CORPORATION
LEGAL02/32003717vl

28