Elan Microelectronics Corporation v. Apple, Inc.

Filing 48

Declaration of Sean P. DeBruine in Support of MOTION to Compel Production of Source Code Documents Per Patent L.R. 3-4(A) re ( 47 ) filed by Elan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D) (DeBruine, Sean) (Filed on 1/13/2010) Modified on 1/14/2010 (bw, COURT STAFF).

Elan Microelectronics Corporation v. Apple, Inc.

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EXHIBIT B

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MATTHEW D. POWERS (Bar No. 104795) [e-mail] m EDWARD R. REINES (Bar No. 135960) [e-mail] m SONAL N. MEHTA (Bar No. 222086) [e-mail] m WEIL, GOTSHAL & MANGES LLP Silico n Valley Office 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant and Counterclaim Plaintiff Apple Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION ELAN MICROELECTRONICS CORPORATION, Plaint iff and Counterclaim Defendant, v. APPLE INC., Defendant and Counterclaim Plaintiff. Case No. C-09-01531 RS APPLE INC.'S INVALIDITY CONTENTIONS JURY TRIAL DEMANDED Hon. Richard Seeborg

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specification fails to provide an adequate written description of "first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a handwriting mode." Claim 4 fails to satisfy the requirements of 35 U.S.C. § 112(1) because the specification fails to provide an adequate written description of "a plurality of second patterns on said plurality of regions for operation in said key and handwriting modes." Claim 7 fails to satisfy the requirements of 35 U.S.C. § 112(1) because the specification fails to provide an adequate written description of "a plurality of second patterns on said plurality of regions for operation in said key and mouse modes." Claim 10 fails to satisfy the requirements of 35 U.S.C. § 112(1) because the specification fails to provide an adequate written description of "[a] capacitive touchpad integrated with mouse and handwriting functions." Claim 10 fails to satisfy the requirements of 35 U.S.C. § 112(1) because the specification fails to provide an adequate written description of "a plurality of second patterns on said plurality of regions for operation in said mouse and handwriting modes." III. ACCOMPANYING DOCUMENT PRODUCTION Pursuant to P.R. 3-4(b), Apple is producing and making available for inspection prior art references and corroborating evidence concerning prior art systems that do not appear in the file histories of the patents at issue. See Bates Nos. APEL0006497-9337. These prior art references and corroborating evidence are cited in and support the accompanying invalidity charts. Apple's search for prior art references, additional documentation, and/or corroborating evidence concerning prior art systems is ongoing. Accordingly, Apple reserves the right to continue to supplement their production as Apple obtains additional prior art references, documentation, and/or corroborating evidence concerning invalidity during the course of discovery. As to P.R. 3-4(a), Elan has access to publicly-available information, on the internet and elsewhere, about Apple's accused instrumentalities. Apple is in the process of collecting additional documents concerning the accused functionalities and will supplement its production
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with documentation sufficient to show the structure, function, or operation of the relevant functionalities of the accused Apple instrumentalities once Elan has provided adequate infringement contentions and as Apple's collection and review of such documents progresses.

Dated: December 7, 2009

WEIL, GOTSHAL & MANGES LLP

By: /s/ Sonal N. Mehta Sonal N. Mehta Attorneys for Defendant and Counterclaim Plaintiff Apple Inc.

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