Elan Microelectronics Corporation v. Apple, Inc.

Filing 84

First Amended Joint Claim Construction and Prehearint Statement filed by Apple, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D) (Mehta, Sonal) (Filed on 5/7/2010) Text modified on 5/10/2010 (bw, COURT STAFF).

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. 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; 7:40Elan'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 Extrinsic Evidence Intrinsic 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 Extrinsic Evidence Judge Breyer's April 7, 2007 Order, Case No. 06-1839 CRB, at 15:1-2. Apple first identified its construction for 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

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

Extrinsic Evidence terms.2

Elan's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence 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. Judge Breyer's April 7, 2007 Order, Case No.

"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.

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;

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

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

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.

Extrinsic Evidence

Intrinsic Evidence 7:34-38; 9:2855; 10:66-11:23; "Synaptics Touch Pad" Brochure; 15:5516:2

Extrinsic Evidence 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

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

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.

Extrinsic Evidence

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

Extrinsic Evidence 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

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

Extrinsic Evidence

Elan's Proposed Construction

Intrinsic Evidence

Extrinsic Evidence

"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;

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.

Col. 2:56-3:1

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Claim Term, Phrase, or Clause "pointing device click function" (claim 2)

Apple's Proposed Construction "function that would normally result from a mouse button click"

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

Extrinsic Evidence

Elan's Proposed Construction

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

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.

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. 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 6 Plain meaning

"a `select' function" (claim 4)

"a selection of an item"

Col. 13:1-12

"control function" (claims 14, 19)

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

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;

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

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

Claim Term, Phrase, or Clause

Apple's Proposed Construction mouse"

Intrinsic Evidence 352FH 50; 352FH 467;

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.

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.

"means for providing an indication" (claim 18)

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

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

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,

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Claim Term, Phrase, or Clause

"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.

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).

Intrinsic Evidence

Extrinsic Evidence

Elan's Proposed Construction firmware or hardware performing the claimed function. This limitation is governed by 35 U.S.C. § 112(6). 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

Extrinsic Evidence

Because the specification does not disclose a corresponding

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.

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

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

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Claim Term, Phrase, or Clause

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

Intrinsic Evidence

Extrinsic Evidence

"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

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.

Claim Term, Phrase, or Clause

Apple's Proposed Construction indefinite.

Intrinsic Evidence

Extrinsic Evidence corresponding to the claimed function.

"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)

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

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.

Claim Term, Phrase, or Clause

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

Intrinsic Evidence

Extrinsic Evidence function.

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

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

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.

Claim Term, Phrase, or Clause

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

Intrinsic Evidence

Extrinsic Evidence structure corresponding to the claimed function.

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

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