Elan Microelectronics Corporation v. Apple, Inc.

Filing 60

Joint Claim Construction and Prehearing Statement filed by Apple, Inc., Elan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E)(Reines, Edward) (Filed on 2/5/2010) Modified on 2/8/2010 (bw, COURT STAFF).

Exhibit E - US Patent No. 6,933,929 Agreed Constructions

Claim Term, Phrase, or Clause "about the periphery of the opening" (claim 10)

Agreed Construction "around the edges of the opening"

Disputed Constructions Claim Term, Phrase, or Clause "wall" (claim 10) Apple's Proposed Construction No construction necessary. Intrinsic Evidence Claim 10; Fig. 4A; Fig. 4B; 8:18-26; APEL000154849; APEL0001560 Extrinsic Evidence Elan's Proposed Construction upright surfaces of the recess and the opening; thickness of a device housing Intrinsic Evidence Col. 8:27-31; Figs. 4A-4B; Claims 10 and 14; and associated text. `929 patent prosecution history including but not limited to the 7/15/2003 office action pp. 3-6, the 3/22/2004 amendments and response pp. 2-7, the 6/28/2004 office action pp. 2-5, the 9/2/2004 Extrinsic Evidence Mr. Dezmelyk is expected to provide testimony regarding how one skilled in the art would have read and understood the disputed claim terms. U.S. Patent No. 5,920,310 to Faggin et al. (Bates No. ELN015937015950); U.S. Patent No.

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Case No. C-09-01531-RS (PVT)

Claim Term, Phrase, or Clause

Apple's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence

Elan's Proposed Construction

Intrinsic Evidence amendments and response pp. 2-9, the 12/3/2004 amendments and response pp. 2-8, and references cited therein.

Extrinsic Evidence 6,262,717 to Donohue et al. (Bates No. ELN016046016061); U.S. Patent No. 6,219,038 to Cho (Bates No. ELN016036016045); U.S. Patent No. 6,392,637 to Liao et al. (Bates No. ELN016117016127); and U.S. Patent No. RE40,323 to Bae (Bates No. ELN016626016640) as cited in Elan's Invalidity Contentions. Mr. Dezmelyk is expected to provide testimony regarding how one skilled in the

"substantially flush" (claim 12)

No construction necessary.

Claim 12; Fig. 4A; 1:47-56; 8:7-17; 8:60-9:7; APEL0001509; APEL0001560

largely but not wholly even or same-level

Col. 8:15-17; 8:62-65; 9:5-7; 9:12-16; 9:2633; 12:35-39; Figs. 4A-4B; Claims 1, 12 and

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Case No. C-09-01531-RS (PVT)

Claim Term, Phrase, or Clause

Apple's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence

Elan's Proposed Construction

Intrinsic Evidence 22; and associated text. `929 patent prosecution history including but not limited to the 7/15/2003 office action pp. 3-6, the 3/22/2004 amendments and response pp. 2-7, the 6/28/2004 office action pp. 2-5, the 9/2/2004 amendments and response pp. 2-9, the 12/3/2004 amendments and response pp. 2-8, and references cited therein

Extrinsic Evidence art would have read and understood the disputed claim terms. U.S. Patent No. 5,920,310 to Faggin et al. (Bates No. ELN015937015950); U.S. Patent No. 6,219,038 to Cho (Bates No. ELN016036016045); U.S. Patent No. 6,392,637 to Liao et al. (Bates No. ELN016117016127); and U.S. Patent No. RE40,323 to Bae (Bates No. ELN016626016640) as cited in Elan's Invalidity Contentions.

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Case No. C-09-01531-RS (PVT)

Claim Term, Phrase, or Clause "housing" (claims 10, 12, 14, 15, 17)

Apple's Proposed Construction No construction necessary.

Intrinsic Evidence Claim 10; Claim 12; Claim 14; Claim 15; Claim 17; Fig. 4A; Fig. 4B ; 1:22-24; 1:38-46; 1:4756; 2:44-56; 3:16; 7:57-8:17; 8:18-26; 8:2746; 8:60-9:7; 9:8-23; 9:24-33

Extrinsic Evidence

Elan's Proposed Construction a rigid structure enclosing the components and circuitry of a device; a "bracket structure" supporting a trackpad from the inside of the device enclosure is not a "housing"

Intrinsic Evidence Cols. 1:18-20; 1:22-30; 1:3856; 2:19-28; 3:16;7:61-8:6; 8:716; 8:20-31; 9:57; 9:10-16; 9:2633; Abstract; Figs. 4A-4B; Claims 1, 7-10, 12-15, 18 and 21-24; and associated text. `929 patent prosecution history including but not limited to the 7/15/2003 office action pp. 3-6, the 3/22/2004 amendments and response pp. 2-7, the 6/28/2004 office action pp. 2-5, the 9/2/2004 amendments and response pp. 2-9, the 12/3/2004 amendments and response pp. 2-8,

Extrinsic Evidence Mr. Dezmelyk is expected to provide testimony regarding how one skilled in the art would have read and understood the disputed claim terms. U.S. Patent No. 5,920,310 to Faggin et al. (Bates No. ELN015937015950); U.S. Patent No. 6,262,717 to Donohue et al. (Bates No. ELN016046016061); U.S. Patent No. 6,219,038 to Cho (Bates No. ELN016036016045); U.S. Patent No. 6,392,637 to

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Case No. C-09-01531-RS (PVT)

Claim Term, Phrase, or Clause

Apple's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence

Elan's Proposed Construction

Intrinsic Evidence and references cited therein.

Extrinsic Evidence Liao et al. (Bates No. ELN016117016127); and U.S. Patent No. RE40,323 to Bae (Bates No. ELN016626016640) as cited in Elan's Invalidity Contentions. McGraw-Hill Dictionary of Scientific and Technical Terms, Third Edition, p.769 (Bates Nos. ELN017232-34). Mr. Dezmelyk is expected to provide testimony regarding how one skilled in the art would have read and understood the disputed claim

"track pad label" (claims 13, 15)

"a protective label that is placed over the touch pad"

Claim 13; Claim 15; Fig. 4A; 8:717; 8:18-26; 8:47-59; 8:609:7; 9:8-23; APEL000153233

Apple may a protective provide expert covering over the track pad testimony regarding how one skilled in the art would have read and understood the disputed claim terms.

Cols. 8:20-24; 8:38-46; 8:5059; 8:65-9:18; Figs. 4A-4B; Claims 1, 4-5, 79, 13-15 and 2124; and associated text. `929 patent prosecution

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Case No. C-09-01531-RS (PVT)

Claim Term, Phrase, or Clause

Apple's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence

Elan's Proposed Construction

Intrinsic Evidence history including but not limited to the 7/15/2003 office action pp. 3-6, the 3/22/2004 amendments and response pp. 2-7, the 6/28/2004 office action pp. 2-5, the 9/2/2004 amendments and response pp. 2-9, the 12/3/2004 amendments and response pp. 2-8, and references cited therein.

Extrinsic Evidence terms. U.S. Patent No. 6,262,717 to Donohue et al. (Bates No. ELN016046016061); U.S. Patent No. 6,219,038 to Cho (Bates No. ELN016036016045); and U.S. Patent No. 6,392,637 to Liao et al. (Bates No. ELN016117016127) as cited in Elan's Invalidity Contentions. Mr. Dezmelyk is expected to provide testimony regarding how one skilled in the art would have read and understood the

"substantially the same thickness" (claim 16)

No construction necessary.

Claim 16; 8:2746; 8:60-9:7

largely but not wholly the same in thickness

Cols.1:52-56; 8:2-6; 8:43-46; Figs. 4A-4B; Claims 16 and 21; and associated text. `929 patent prosecution history including

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Case No. C-09-01531-RS (PVT)

Claim Term, Phrase, or Clause

Apple's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence

Elan's Proposed Construction

Intrinsic Evidence but not limited to the 7/15/2003 office action pp. 3-6, the 3/22/2004 amendments and response pp. 2-7, the 6/28/2004 office action pp. 2-5, the 9/2/2004 amendments and response pp. 2-9, the 12/3/2004 amendments and response pp. 2-8, and references cited therein

Extrinsic Evidence disputed claim terms. U.S. Patent No. 5,920,310 to Faggin et al. (Bates No. ELN015937015950); U.S. Patent No. 6,219,038 to Cho (Bates No. ELN016036016045); U.S. Patent No. 6,392,637 to Liao et al. (Bates No. ELN016117016127); U.S. Patent No. RE40,323 to Bae (Bates No. ELN016626016640) as cited in Elan's Invalidity Contentions.

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Case No. C-09-01531-RS (PVT)