Elan Microelectronics Corporation v. Apple, Inc.

Filing 85

Opening Claim Construction Brief filed byApple, Inc. (Powers, Matthew) (Filed on 5/7/2010) Modified on 5/10/2010 (bw, COURT STAFF).

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MATTHEW D. POWERS (Bar No. 104795) [e-mail] JARED BOBROW (Bar No. 133712) [e-mail] DOUGLAS E. LUMISH (Bar No. 183863) [e-mail] SONAL N. MEHTA (Bar No. 222086) [e-mail] DEREK C. WALTER (Bar. No. 246322) [e-mail] NATHAN GREENBLATT (Bar No. 262279) [e-mail] WEIL, GOTSHAL & MANGES LLP Silicon 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

ELAN MICROELECTRONICS CORPORATION, Plaintiff and Counterclaim Defendant, v. APPLE INC., Defendant and Counterclaim Plaintiff.

Case No. C-09-01531 RS (PVT) APPLE'S OPENING CLAIM CONSTRUCTION BRIEF JURY TRIAL DEMANDED Hon. Richard Seeborg Tutorial: June 21, 2010 1:30 p.m. Hearing: June 23, 2010 1:30 p.m.

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF CONTENTS Page INTRODUCTION .......................................................................................................................... 1 LEGAL FRAMEWORK................................................................................................................. 2 ARGUMENT .................................................................................................................................. 2 I. U.S. PATENT NO. 5,825,352 ............................................................................................ 2 A. Background ............................................................................................................. 2 B. "Identify a First Maxima in a Signal Corresponding to a First Finger" /"Identify a Minima Following the First Maxima"/"Identify a Second Maxima in a Signal Corresponding to the Second Finger Following said Minima" (Claims 1 and 18) .................................................................................... 6 1. Elan Is Estopped From Challenging Judge Breyer's Constructions ........... 7 2. Even Setting Aside Estoppel, Apple's Proposed Constructions Should Be Adopted On The Merits............................................................. 9 a. Apple's Proposed Construction Gives Effect To The Relation Requirements Of The Claim Language ............................ 9 b. Apple's Proposed Construction Comports With The Specification's Consistent Description Of The Spatial And Temporal Requirements Of The Invention ................................... 12 C. "Identify" (Claims 1 and 18)................................................................................. 14 D. "In Response To" (Claims 1 and 18) .................................................................... 16 E. "Means For Selecting An Appropriate Control Function" (Claim 19) ................. 18 II. U.S. PATENT NO. 7,274,353 .......................................................................................... 21 A. Background ........................................................................................................... 21 B. "A First Pattern On Said Panel For Representing A Mode Switch To Switch Said Touchpad Between A Key Mode And A Handwriting Mode" (Claims 1, 4, 7, and 10) ......................................................................................... 21 C. "A Plurality Of Second Patterns On Said Plurality Of Regions For Operation In Said Key And Handwriting Modes" (Claims 1, 4, 7, and 10) ......... 25 III. U.S. PATENT NO. 5,764,218 .......................................................................................... 26 A. Background ........................................................................................................... 26 B. "Cursor Control Operation" (Claims 1 and 5) ...................................................... 27 IV. U.S. PATENT NO. 7,495,659 .......................................................................................... 30 A. Background ........................................................................................................... 30 B. "Sensors Configured to Map the Touch Pad Surface Into Native Sensor Coordinates" (Claim 1) ......................................................................................... 31 C. "One Or More Logical Device Units" (Claims 1, 8, 10, 12, and 13).................... 33 1. The Claims Do Not Require "Discrete" Actuation Zones ........................ 34 2. The Claims Do Not Require Multiple Logical Device Units.................... 34 3. The Claims Do Not Require Multiple Sensors ......................................... 35
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

i

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF AUTHORITIES Page CASES Aqua-Lung Am., Inc. v. Am. Underwater Prods. No. C 07-2346 RS, 2009 U.S. Dist. LEXIS 18172 (N.D. Cal. Feb. 26, 2009) ................................................................................................................................... 2 Aristocrat Techs., v. Int'l Game Tech. 521 F.3d 1328 (Fed. Cir. 2008)................................................................................... 19, 20 Bicon, Inc. v. Straumann Co. 441 F.3d 945 (Fed. Cir. 2006)........................................................................................... 11 Blackboard, Inc. v. Desire2Learn, Inc. 574 F.3d 1371 (Fed. Cir. 2009)................................................................................... 19, 21 Computer Docking Station Corp. v. Dell, Inc. 519 F.3d 1366 (Fed. Cir. 2008)......................................................................................... 18 Edwards Lifesciences LLC v. Cook Inc. 582 F.3d 1322 (Fed. Cir. 2009)......................................................................................... 28 Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc. 2009 U.S. App. LEXIS 26358 (Fed. Cir. Dec. 4, 2009) ................................................... 19 Finisar Corp. v. DirecTV Group, Inc. 523 F.3d 1323 (Fed. Cir. 2008)......................................................................................... 19 Helmsderfer v. Bobrick Washroom Equip., Inc. 527 F.3d 1379 (Fed. Cir. 2008)................................................................................... 25, 30 Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc. 554 F.3d 1010 (Fed. Cir. 2009)................................................................................... 12, 25 Net MoneyIN, Inc. v. Verisign, Inc. 545 F.3d 1359 (Fed. Cir. 2008)......................................................................................... 19 Netcraft Corp. v. Ebay, Inc. 549 F.3d 1394 (Fed. Cir. 2008)......................................................................................... 23 Oatey Co. v. IPS Corp. 514 F.3d 1271 (Fed. Cir. 2007)......................................................................................... 29 Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005)......................................................................... 1, 26, 28, 34 Praxair, Inc. v. ATMI, Inc. 543 F.3d 1306 (Fed. Cir. 2008)......................................................................................... 18 Resqnet.com, Inc. v. Lansa, Inc. 346 F.3d 1374 (Fed. Cir. 2003)......................................................................................... 25

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

ii

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF CONTENTS (continued)

Page

Schindler Elevator Corp. v. Otis Elevator Co. 593 F.3d 1275 (Fed. Cir. 2010)........................................................................................... 9 Scimed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc. 242 F.3d 1337 (Fed. Cir. 2001)......................................................................................... 23 Smith & Nephew, Inc. v. Arthrex, Inc. No. CV 04-29-MO, 2007 U.S. Dist. LEXIS 27499 (D. Ore. Apr. 12, 2007) ..................... 9 Solomon Techs. Inc. v. Toyota Motor Corp. No. 05-cv-1702-T-MAP, 2010 U.S. Dist. LEXIS 23676 (M.D. Fla. Jan. 26, 2010) ............................................................................................................................. 9

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

iii

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Pursuant to the Court's March 18, 2010 Case Management Scheduling Order, Apple submits this Opening Claim Construction Brief in support of its proposed constructions for terms in the following patents-in-suit: United States Patent Nos. 5,825,352 ("the '352 patent); 7,274,353 ("the '353 patent"); 5,764,218 ("the '218 patent"); and 7,495,659 ("the '659 patent"). There are nine terms scheduled to be construed by the Court during this claim construction process, the parties having jointly identified these terms as most significant to the resolution of this case. INTRODUCTION It is fundamental that the proper scope of a patent claim must be grounded in an understanding of "what the inventors actually invented and intended to envelop with the claim." Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Elan's proposed claim constructions repeatedly ignore this guiding principle and instead reflect a legally­improper, results-driven approach. For Elan's asserted patents, Elan ignores the express language of the claims as well as the uniform descriptions of the claimed inventions in an effort to stretch narrow, prior generation patents to cover next generation, sophisticated technologies. For one of the patents, Elan

belatedly changed its claim construction positions--on the eve of its expert's deposition and just days before the original due date for opening claim construction briefs--to read out express limitations recited in the claim language, presumably because Elan recognized problems with its infringement case. Notably, the limitations Elan now seeks to remove are the same limitations that were (1) advocated by Elan in a prior litigation as "mandated" by the intrinsic record, (2) adopted by Judge Breyer in the prior litigation, and (3) relied on by Elan in obtaining summary judgment of infringement and a preliminary injunction in the prior litigation. See Elantech Devices Corp. v. Synaptics, Inc., No. C 06-01839 CRB (N.D. Cal. filed Mar. 10, 2006) (hereinafter "the Synaptics litigation"). Setting aside that Elan's new position is inconsistent with both the merits and principles of estoppel, Elan's brazen attempt to change a construction it has advocated as correct for years at this late date only demonstrates that Elan's approach to claim construction is guided more by its end-game than a fair analysis of claim scope. This approach is mirrored in other instances, where Elan proposes that significant claim limitations that frame core
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

1

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

disputes on ultimate issues simply go unconstrued such that Elan can pursue its sweeping infringement theory through summary judgment and trial. Likewise, for Apple's asserted patents, Elan ignores the claims and the intrinsic evidence that sheds light on the scope of the claimed inventions and instead seeks to construe the patents unduly narrowly based on incomplete and out-of-context snippets of evidence. In doing so, Elan again fails to give meaning to the true scope of the invention, and fails to give effect to the fundamental principle that claims should be construed to cover what was actually invented--no more and no less. LEGAL FRAMEWORK Because the Court is very familiar with the general legal framework for claim construction, Apple does not restate the general of law claim construction here. See, e.g., AquaLung Am., Inc. v. Am. Underwater Prods., No. C 07-2346 RS, 2009 U.S. Dist. LEXIS 18172, at *3-*6 (N.D. Cal. Feb. 26, 2009), (Exh. A).1 Specific authorities are cited and discussed below within the context of the issues to which they apply. ARGUMENT Each of the patents at issue relates to different aspects of touch-sensitive input technology for computers or electronic devices. Generally speaking, touch-sensitive input devices allow a user to interact with the computer or electronic device by touching the touch-sensitive input with their fingers, as in a laptop touchpad. The touch-sensitive input device processes a user's contacts to determine and perform functions based on a user's commands. I. U.S. PATENT NO. 5,825,352 A. Background

Elan's '352 patent relates to a specific technique for detecting whether multiple fingers are simultaneously in contact with a touch-sensitive input device. Exh. B [Von Herzen Decl.] at pp. 2-3; see also Exh. C ['352 patent] at Abstract. The stated purpose of detecting a second (or subsequent) finger is to perform conventional mouse functions with a touchpad where such

1

Exhibit citations are to the Declaration of Derek Walter filed concurrently herewith. 2
Case No. C-09-01531 RS (PVT)

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

functions cannot be performed if only one finger can be detected. See, e.g., id. at 1:41-2:14, 2:563:15. The '352 patent does not pertain to touch sensing technology itself. Rather, the '352 patent describes and claims a technique that uses "finger profiles" to count the number of contacts on a known touch sensing device. See id. at 1:18-26, 2:20-27. In particular, throughout its disclosure, the '352 patent describes detecting the presence of more than one finger using a capacitive touchpad in which capacitance values reflecting touches to the touchpad are measured along a series of parallel conductive "traces" that extend across either the length or width of the touchpad, as shown below:

Id. at Fig. 2, 2:18-37 (describing and incorporating by reference patents disclosing known capacitance touchpads); see also id. at 5:20-43. Significantly, only one value is read per trace line, with that value reflecting the overall capacitance reading for that entire trace. Id. at 5:55-6:1 ("As noted above, the cycle begins by scanning the traces and measuring the capacitance on each trace."); 5:35-43 (incorporating by reference application Ser. No. 08/478,290 describing a capacitive touchpad that generates a finger profile comprised of one value from each trace). According to the '352 patent, these traces are scanned along either the x- or y-axis to provide a series of capacitance values corresponding to the intensity of one or more finger contacts along the surface of the touchpad along that axis. In other words, the touches of the finger(s) to the touchpad are projected onto the x- and y-axes to create x- and y-profiles of the finger(s). For instance, if two fingers were to come into contact with the touchpad shown above, finger profiles in the x-direction and the y-direction would be generated, as reflected in the figure below:

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

3

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 capacitance values from scanning along x-axis 012 4 5 4 24 54200000000 first maxim minima See Exh. C ['352 patent] at Fig. 7B (labels and values superimposed for illustrative purposes). Likewise, the "finger profile" labeled "Y Profile" comprises a series of capacitance values along the y-axis, one for each horizontal trace. The process of reducing touches to a profile along an axis and then analyzing that profile to discern multiple touches is central to the invention of the '352 patent. The claims of the '352 patent set forth a specific method for detecting the presence of two contacts on a touchpad by analyzing the finger profile obtained from scanning a touchpad. See, e.g., id. at 6:28-35. The
2

Id. at Fig. 7B; see also Figs. 3, 4, 7C-7F. Each of these finger profiles is a one-dimensional representation of the touches to the touchpad projected onto an axis.2 See Exh. D [Dezmelyk Tr.] at 101:5-9. For instance, each vertical trace provides a single capacitance value such that the "finger profile" labeled "X Profile" comprises a series of values along the x-axis:

second maxima

The x-profile and y-profile are each one dimensional in that they reflect values associated with only a single axis. Peaks and valleys in the x-profile represent the magnitude of capacitance values along the x-axis, but do not provide any information about the y-dimension. 4
Case No. C-09-01531 RS (PVT)

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

method first recites scanning a touch sensor to "identify a first maxima in a signal corresponding to a first finger," "identify a minima following the first maxima," and "identify a second maxima in a signal corresponding to a second maxima following [the] minima." The method then requires "providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima." See id. at Claims 1, 18. According to the claims (and consistent with the specification and file history), this identification is accomplished by traversing through the sequence of values in the finger profile and identifying a maxima, then identifying a minima, and then identifying another maxima. See, e.g, id. at 9:18-10:30. For example, in the figure below, two touches are indicated in a finger profile taken on the x-axis because the profile reflects a first peak 85 (representing a first finger) followed by a valley 90 (representing the space between fingers) followed by another peak 95 (representing the second finger) as one traverses the profile from left-to-right:

See, e.g., id. at Fig 3. The '352 patent explains that the identification of two maxima with an intervening minima occurs sequentially along the axis of the profile, in both space and time. According to the patent, two touches are indicated by "detect[ing] a first maxima 85 indicative of a first finger in operative proximity to the touchpad 30, followed by a minima 90 indicative of a space between the fingers, and further followed by another maxima 95 indicative of a second finger operatively coupled to the touchpad 30."3 Id. at 6:28-35; see also id. at 9:18-10:25 (describing Xcompute algorithm for identification of peaks and valleys along x-axis).

3

Emphasis added and internal citations omitted throughout, unless otherwise noted. 5
Case No. C-09-01531 RS (PVT)

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Term

B.

"Identify a First Maxima in a Signal Corresponding to a First Finger" /"Identify a Minima Following the First Maxima"/"Identify a Second Maxima in a Signal Corresponding to the Second Finger Following said Minima" (Claims 1 and 18)
Court's Construction from Synaptics Identify a first peak value in a finger profile obtained from scanning the touch sensor. Identify the lowest value in the finger profile that occurs after the first peak value and before another peak value is identified. After identifying the lowest value in the finger profile, identify a second peak value in the finger profile. Apple's Construction Identify a first peak value in a finger profile taken on an axis obtained from scanning the touch sensor. 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 Construction Identify a first peak value in a finger profile obtained from scanning the touch sensor. Identify the lowest value in the finger profile that occurs after the first peak value.

"identify a first maxima in a signal corresponding to a first finger" "identify a minima following the first maxima"

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

Identify a second peak value in the finger profile following the minima.

In Synaptics, Judge Breyer concluded that the claims should be construed to require identification of maxima and minima in reference to a "finger profile"--exactly as Elan advocated the claims should be construed. Until recently, the parties' only dispute on the above limitations was the nature of the "finger profile" required by Judge Breyer's constructions of these limitations. Apple's position is that it is central to the alleged invention of the '352 patent, and confirmed conclusively throughout the specification and claims, that a "finger profile" is a one-dimensional representation of finger contact taken along an axis of the touchpad. In contrast, Elan has sought to recast Judge Breyer's constructions to broaden a "finger profile" to cover virtually any representation of a touch, without reference to the dimensionality or the axis along which that representation is generated. Indeed, as shown below, Elan's re-interpretation of a finger profile improperly recasts the alleged invention of the '352 patent in a way that the claims simply were not intended to cover and that has no basis in the specification. The same is true for a second fundamental dispute relating to the '352 patent, this one arising for the first time on the eve of claim construction briefing in this case. As reflected in the parties' February 5, 2010 Joint Claim Construction Statement and the claim construction
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

6

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

disclosures leading up to it, Elan had long agreed with Apple that Judge Breyer correctly construed the claims to require the sequential identification of a first peak value in a finger profile followed by identification of the lowest value in the finger profile followed by identification of second peak value in the profile--exactly as Elan proposed they be construed. Apparently concerned that the construction it advanced and that Judge Breyer adopted in Synaptics would harm its infringement theory in this case, Elan recently decided to abandon these limitations altogether and try a new approach. Thus, more than two months after the parties' filed their Joint Claim Construction Statement and on the day before Apple was to depose Elan's claim construction expert, Elan came forward with new constructions that purport to read-out the claim requirements of sequential identification of the minima following a first maxima and a second maxima following that minima. As with its attempt to recast the requirement of a "finger profile" Elan itself urged in Synaptics, Elan's eleventh-hour attempt to discard Judge Breyer's constructions as a whole must be rejected, both procedurally and substantively. 1. Elan Is Estopped From Challenging Judge Breyer's Constructions

Elan confirmed long ago that the "identify a first maxima...," "identify a minima ...," and "identify a second maxima..." limitations should be construed to require the sequential identification of maxima and minima on a finger profile, both temporally and spatially. In the Synaptics litigation, Elan argued to Judge Breyer that the intrinsic evidence "mandates" its proposed construction that these terms be construed to require identification of profile values sequentially, where the method "identif[ies] the lowest value in the finger profile that occurs after the first peak value and before another peak value is identified." Exh. E [Elantech Opening CC Br.] at 11. According to Elan, its constructions were "based on the meaning of the term in the context of the '352 patent ... " and were supported by the specification and file history of the patent. Id.; Exh. F [Elantech Reply CC Br.] at 6. After successfully convincing Judge Breyer that this was so and receiving exactly the constructions it sought for these terms, Elan sought both a summary judgment of infringement and a preliminary injunction on Synaptics' products. In so arguing, Elan's counsel, Mr.

DeBruine, could not have been more clear as to Elan's position on the scope of the patent:
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

7

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

So again, the claim language here, and this is important, the claim language says identify a first maxima, identify a minima, identify a second maxima. . . . How is it identified in the -- in the patent? You compare X(n) to X(n-l), until you find a excuse me, a place that is higher than its neighbors. You continue that comparison of the value associated with a particular trace to its neighboring trace, until you find the lowest value. You then continue on your analysis, trace by trace, until you find the trace that has the highest value. Exh. G [Oct. 5, 2007 SJ Hearing Tr.] at 31:4-23. Elan ultimately won summary judgment and a preliminary injunction on the basis of this construction, and when Synaptics appealed these results to the Federal Circuit, Elan did nothing to change the positions it took before Judge Breyer. See Exh. H [Elantech Appeal Br.] at 16-17 (emphasizing that Synaptics did not appeal Judge Breyer's claim constructions). Not surprisingly, Elan had been intent in this litigation on reestablishing the constructions that it believed had served it so well in Synaptics. During claim construction meet and confer, Elan agreed with Apple that Judge Breyer's constructions (which adopted Elan's proposed constructions) should form the baseline for claim construction in this matter. In the parties' Joint Claim Construction and Prehearing Statement ("JCCS"), Elan presented constructions virtually identical to those it received in the Synaptics litigation,4 specifically citing to Judge Breyer's Claim Construction Order as supporting its constructions. See D.I. 60, Exh. A at 1-4. However, just days before the original deadline for submission of opening claim construction briefs and on the eve of the deposition of its claim construction expert, Elan informed Apple that it would not be relying on Judge Breyer's constructions after all. According to Elan, it had inadvertently failed to modify its previous constructions to remove a critical aspect of Judge Breyer's construction--that the steps of identifying the maxima and minima must occur in sequence. See Exh. I [4/8/10 DeBruine email]. Elan provided no explanation for its change of position, nor could there be any legitimate basis for the reversal of position. There have, of course, been no changes in the intrinsic record that had once "mandated" these constructions in the Synaptics litigation, let alone since the JCCS, that would justify this reversal. The only thing that may have changed is Elan's own realization that the claim constructions it had adopted for The one exception here concerned the claim term "identify a minima following the first maxima," for which the language "and before another peak value is identified" was inadvertently omitted by Apple, which prepared and filed the Joint Claim Construction Statement.
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF 4

8

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

years simply do not apply to Apple's two-dimensional touch imaging products. Elan's tactic of abandoning once-embraced and litigated claim constructions is barred by both the doctrines of collateral and judicial estoppel. Not only is Elan collaterally estopped based on Judge Breyer's prior claim construction ruling, but it is judicially estopped because it was Elan itself that successfully advocated for that construction and ultimately relied on it in obtaining summary judgment and a preliminary injunction. See, e.g., Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1282 n.1 (Fed. Cir. 2010) ("Schindler also requests that we strike the phrase `via electromagnetic waves' from the district court's construction of `information transmitter.' But the construction of `information transmitter' that Schindler proposed to the district included that very phrase. We therefore decline to alter the district court's construction as it pertains to electromagnetic waves."); Solomon Techs. Inc. v. Toyota Motor Corp., No. 8:05-cv1702-T-MAP, 2010 U.S. Dist. LEXIS 23676, at *10 (M.D. Fla. Jan. 26, 2010), (Exh. J) ("[Solomon's] positions regarding the means-plus-function limitation[s] are patently inconsistent; its stipulation and then retraction create an inappropriate perception; and, if its new arguments were to be accepted and judicial estoppel were not to apply, it would unfairly benefit."); Smith & Nephew, Inc. v. Arthrex, Inc., No. CV 04-29-MO, 2007 U.S. Dist. LEXIS 27499, at *7-*8 (D. Or. Apr. 12, 2007), (Exh. K) (finding collateral estoppel where "the goals of uniformity, consistency, and public notice would be completely undermined if the patentee were allowed to change the meaning of the patent words based on the facts of a given case"). In short, Elan is doubly barred from advocating its new position. 2. Even Setting Aside Estoppel, Apple's Proposed Constructions Should Be Adopted On The Merits a. Apple's Proposed Construction Gives Effect To The Relational Requirements Of The Claim Language

In the Synaptics litigation, Elan made clear that the claim term "following" cannot be ignored. Exh. F [Elantech Reply CC Br.] at 1, 5. Adopting Elan's own proposed constructions, Judge Breyer gave the "following" limitation meaning in two important ways, requiring that identification of maxima and minima in the claims be performed sequentially in space and in time: identification of a "first peak value in a finger profile", followed by identification of the
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

9

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

"lowest value in the finger profile" after identification of the first peak value and "before" identification of another peak value, and then, "after" identification of the "lowest value," identification of a "second peak value in the finger profile." Exh. L [Apr. 6, 2007 CC Order] at 15. These relational requirements are expressly recited in the claims, were urged by Elan in the Synaptics litigation, were adopted by Judge Breyer in the Synaptics litigation, and were embraced again by Elan here until just recently. Nevertheless, Elan now seeks to run from these relational requirements. Indeed, Elan's latest constructions explicitly disavow the temporal requirements of the claims by removing any trace of the sequential identification of maxima and minima from its proposed constructions. See, e.g., Exh. D [Dezmelyk Tr.] at 42:8-15 (testimony of Elan's expert that Elan is modifying its constructions to "remove the temporal nature of [them]"). With respect to the spatial requirements that Elan embraced in Synaptics and that Elan purports to advance here, Elan urges constructions that effectively read them out of the claims in the context of this case. See id.; see also Exh. F [Elantech Reply CC Br.] at 1, 5. Indeed, unlike the one-dimensional context of the '352 patent--where every maxima and minima inherently falls along the finger profile--the requirement that maxima and minima follow each other is meaningless in the two-dimensional context of Apple's modern products. Taking as an example the image that Elan contends is a profile of touches on a touchpad, it is clear that the relational requirements of the claims simply have no meaning in this context:

See Exh. M [Dezmelyk Summary] ¶ 22. Absent an axis to traverse, there is no starting place and no definitive way to order the peaks or identify one peak as "following" another. For example, in the figure above, any peak could "follow" any other peak, depending on which axis is the point of
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

10

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

reference. As shown below, Peak 2 follows Peak 1 and precedes Peak 3 as one travels from leftto-right along the x-axis, while Peak 3 follows Peak 1 and precedes Peak 2 along the y-axis:

Indeed, without an axis for reference, Elan's proposed constructions provide no construct, frame of reference, or formula of any sort for determining whether, in a two-dimensional plane, one object is "first," "second," or "following" another. It is thus no surprise that, when confronted with this figure in deposition, Elan's expert was forced to concede that the figure above is in fact not a finger profile. Exh. D [Dezmelyk Tr.] at 141:4-23. In contrast, Apple's proposed constructions appropriately include a prescription for determining whether the maxima and minima follow one another in the finger profile as required by the claim. Specifically, Apple's construction requires that identification of maxima and minima occur sequentially in a finger profile "taken on an axis." While placing no limitation on touchpad hardware or the type or orientation of the axes selected (for example, it could be taken along an axis that is diagonal to the x- and y-axes), this construction at the same time removes ambiguity regarding how to identify the "minima" that is "following" the first peak. One simply traverses values along the axis and sequentially--both in space and in time--identifies a peak, a valley, and then another peak. This sequential identification of maxima and minima along an axis breathes meaning into the relational claim language "first," "second," and, in particular, "following," in a way that Elan's proposed construction simply cannot. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ("claims are interpreted with an eye toward giving effect to all terms in the claim"). By omitting the requirement of sequential identification of maxima and minima both spatially and temporally, Elan apparently seeks to argue, as the need
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

11

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

arises, that various values identified in a two-dimensional image can be identified in any way and in any order it desires to conjure a "finger profile" that purportedly fits the structure of the claims. Of course, this sort of post hoc identification of maxima and minima is simply not the recipe of the claims. b. Apple's Proposed Construction Comports With The Specification's Consistent Description Of The Spatial And Temporal Requirements Of The Invention

Claim language does not stand in a vacuum. Here, the specification not only supports Apple's proposed constructions, but compels them. The requirement that a finger profile be taken on an axis, both in space and time, is not borne from one or a handful of embodiments or disclosures in the specification. It is essential to the very character of the claimed invention and is foundational to every embodiment and disclosure in the '352 patent. See, e.g., Kinetic

Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1019 (Fed. Cir. 2009) ("All of the examples described in the specification involve skin wounds. To construe `wound' to include fistulae and `pus pockets' would thus expand the scope of the claims far beyond anything described in the specification."). The '352 patent provides clear guidance that a finger profile is taken on an axis, whether in the X direction, Y direction, or some other angular direction: While the foregoing example describes identification of minima and maxima in the X and Y directions, 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. Exh. C ['352 patent] at 11:11-15. In other words, while the invention was disclosed using the X and Y axes, other embodiments within the scope of the invention include "analysis along a diagonal or some other angular direction." The "analysis" is, however, always "along" a

"direction," or, more simply, on an axis. It is particularly noteworthy that, in attempting to explain the breadth of the claims, the patentees at the same time confirmed that the claims were limited to the analysis of finger profiles taken along an axis, as reflected in Apple's construction. This understanding permeates the specification. For instance, the patentee explained the "only requirement" vis-ŕ-vis distinguishing

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

12

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

among fingers as follows: The only requirement is that, in the profile of finger-induced capacitances, the profile of the newly placed finger exhibits a zero value or a local minimum on each side of its peak value, in at least one of the X or Y directions, so that it may be distinguished from the other finger(s) in contact with the touchpad. Id. at 11:49-55. Referring to minima on "each side" of a peak, and calling for those minima to be reflected in profiles taken in "at least one of the X or Y directions," confirms that the '352 invention requires the analysis of finger profiles that are taken along an axis. Even Elan's expert admits that the specification does not describe any other embodiment of a finger profile. See Exh. D [Dezmelyk Tr.] at 140:23-141:3 141:25-142:7, 142:20-143:6. Likewise, in describing "a finger profile ... indicative of the presence of two fingers spaced apart," the specification explains that "the circuitry, software or firmware of the touchpad circuitry, such as that shown in Fig. 2, detects a first maxima 85 indicative of a first finger in operative proximity to the touchpad 30, followed by a minima 90 indicative of a space between the fingers, and further followed by another maxima 95 indicative of a second finger operatively coupled to the touchpad 30." Exh. C ['352 patent] at 6:26-38, Fig. 3; see also 6:39-47, Fig. 4. Thus, the specification, like the claims, discloses an ordered sequence of maxima and minima that are identified "following" one another both temporally and spatially in the finger profile. Consistent with this, the sole process of identifying two fingers disclosed in the '352 patent--both generally and in all embodiments--makes use of a finger profile taken on either the x- or y-axis. See, e.g., id. at 1:28-40, 5:20-55, Fig. 2; see also Figs. 7C, 7D, 7E, 7F-1 and 7F-2, Exh. B [Von Herzen Decl.] at pp. 5-6. As explained above, the '352 patent's touch-sensor technology only produces finger profiles that are along an axis. Specifically, the touchpad sensor disclosed in the specification includes both "X DIRECTION CONDUCTORS" and "Y DIRECTION CONDUCTORS." Exh. C ['352 patent] at Fig. 2; see also id. at 5:28-32 ("The rows and columns are connected to an analog multiplexer 45 through a plurality of X (row) direction conductors 50 and a plurality of Y (column) direction conductors 55 one conductor for each row and each column."). Thus, the concept of a specific "DIRECTION" is intrinsic to the technology used to acquire the finger profiles in all disclosed embodiments of the '352 patent.
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

13

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

This would make little sense unless the finger profiles were to be taken along an axis, such as the "X DIRECTION" or "Y DIRECTION" axes of Fig. 2. The notion of traversing "along an axis"--both in space and in time--is perhaps nowhere more evident than with respect to the very algorithm disclosed in the specification for ascertaining the presence of maxima and minima. Indeed, the series of values through which the algorithm traverses is labeled according to an axis on which it is taken (either the X or Y axis), thus directly embodying the concept of the finger profile being taken along an axis. See, e.g., Exh. C ['352 patent] at 5:63-65 ("[T]his finger-induced capacitance is stored in RAM, as X(1) through X(Xcon) and Y(1) through Y(Ycon) . . . ."); see also Exh. B [Von Herzen Decl.] at pp. 56. In fact, nearly every variable used in connection with the disclosed algorithm is named according to the direction along which the profile is taken. Exh. C ['352 patent] at 7:11-23, 8:559:18. Perhaps most telling, the algorithm is itself entitled either "Xcompute" or "Ycompute" depending on the axis along which the profile is taken. Exh. C ['352 patent] at 7:43-48, Figs. 6-1, 8-1, 9-1. The disclosed algorithm--mirroring the ordered steps "(a)," "(b)," and "(c)," in the claims--also naturally traverses sequentially in time through the one-dimensional array of values, first identifying a peak, then a valley, and then another peak in the finger profile. Id. at 9:51-60. For instance, with respect to the first peak, the specification discloses traversing through the profile point-by-point until the values stop increasing, explaining that "[a]t this point, the peak has been found." Id. at 9:51-60. Similarly, the specification explains that "eventually" the

minima will be detected when the array of values, analyzed in sequence, stops decreasing. See id. at 9:61-10:8. Finally, with respect to the second peak, the specification discloses that the array of values "will eventually start to decrease," and that "[a]t this point" the second peak has been found. See id. at 10:19-25. As Elan's expert Mr. Dezmelyk concedes, the disclosed algorithms all require traversal of the finger profile to identify a maximum, followed by a minimum and further followed by a second maximum--no other algorithm is described or disclosed, much less one for considering a two-dimensional image. Exh. D [Dezmelyk Tr.] at 148:25-149:12.

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

14

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

C.
Term "identify"

"Identify" (Claims 1 and 18)
Apple's Construction Recognize a value to be. Elan's Construction Plain meaning.

Elan's contention that this term requires no construction is difficult to understand in light of the events of the Synaptics litigation, which unequivocally confirmed that there are critical shades of meaning within this claim term that require the Court's attention. Indeed, in Synaptics, after claim construction and following review of the parties' summary judgment briefs, Judge Breyer recognized a latent dispute between the parties over the meaning of this very term. In advance of oral argument on summary judgment, Judge Breyer thus propounded specific questions regarding what it means for "maxima" and "minima" to be "identified," and the parties subsequently argued the matter. See, e.g., Exh. G [Oct. 5, 2007 SJ Hearing Tr.] at 5:17-20. Ultimately, in ruling on summary judgment, Judge Breyer had to provide additional guidance regarding the "identifying" step of the claims. See Exh. N [Oct. 26, 2007 SJ Order] at 6. Unfortunately, despite Elan's contention that no construction is necessary, a similar latent claim construction dispute threatens to arise here absent the Court's guidance. Although Elan's infringement contentions provide only superficial notice of Elan's theories, it appears that Elan's theory is that the "identifying" steps of the claims are satisfied if a value corresponding to a maximum is merely recorded in memory, even if there is no recognition by the system that this value actually corresponds to a maximum or minimum. To avoid unnecessary disputes later in the case, Apple asks that the Court construe the term "identify" to clarify that the term means "recognize a value to be." Apple's proposed definition confirms the basic requirement that values corresponding to maxima and minima at least be recognized as being maxima and minima. This construction is consistent with not only the ordinary meaning of the claim term but with the very nature of the claimed invention as recited in the claims and described in the specification. Indeed, the

specification explains that when values in the finger profile have certain characteristics, the peak has been found and the value of the Xpeak1 variable is then set to a value corresponding to that peak. Exh. C ['352 patent] at 9:51-55; see also Exh. B [Von Herzen Decl.] at pp. 7. Likewise, when values in the finger profile have other characteristics, the valley is detected and the XValley
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

15

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

variable is set to the corresponding value. Exh. C ['352 patent] at 10:1-4; see also 10:9-25 (describing identification of second maximum and setting of variable XPeak2). In this way, the specification confirms that values are identified as "maxima" and "minima" when they are recognized as being maxima and minima. See Exh. D [Dezmelyk Tr.] at 198:23-199:13. Elan has failed to raise any objection to the substance of Apple's construction or offer any meaningful evidence to the contrary. This is not surprising. During the Synaptics litigation, Elan argued strenuously that the term should be understood in a manner consistent with Apple's proposed construction here. For instance, during the Synaptics summary judgment hearing, Elan argued that the identification process of the patent included an analysis of the traces "trace by trace, until you find the trace that has the highest value." See Exh. G [Oct. 5, 2007 SJ Hearing Tr.] at 31:17-23. This analysis led to the recognition not only of the fact that a certain value corresponded to a maximum or minimum, but the actual values of those maxima and minima in the finger profile. Elan summed this up in a manner strikingly resonant with Apple's

construction: "That is what an identification is. It is information sufficient that the system knows what that value is." See Exh. G [Oct. 5, 2007 SJ Hearing Tr.] at 32:20-22; see also id. at 30:18-24, 31:17-32: 33:17-19. In other words, Elan concedes that to "identify" a maxima or minima, the system must have information necessary to "know[] what that value is." Given Elan's unequivocal position on this issue in the Synaptics litigation, its attempts to resist Apple's proposed construction should be rejected. D.
Term "in response to"

"In Response To" (Claims 1 and 18)
Apple's Construction After and in reaction to. Elan's Construction Plain meaning.

As with the claim term "identify," Apple asks that the term "in response to" be construed in accordance with its plain and ordinary meaning so as to avoid unnecessary belated claim construction disputes during summary judgment or, even worse, in the midst of trial. In

particular, although the claims recite "providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima," Elan apparently seeks

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

16

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

to preserve its ability to contend that this "indication" can instead be provided based on something other than the identification of the two maxima specifically recited by the claim. Consistent with the plain and ordinary meaning of the claim term "in response to," the intrinsic record of the '352 patent confirms that the inventors described and claim to have invented a technique in which two maxima determine the presence of two fingers on the touchpad. As discussed above, the claims recite that they are directed to "detecting the operative coupling of multiple fingers" and that this process includes three initial steps: the identification of a first peak, a minima, and, finally, a second peak. See Exh. C ['352 patent] at 16:14-20 (Claim 1). Immediately following these steps, the claims recite providing an indication of the presence of two fingers "in response to" the identification of the two recited maxima. In other words, the claims recite that it is the recognition of the two maxima identified in the foregoing elements that determines that two fingers are present. Id. at 16:21-23. The specification also confirms that it is the identification of maxima indicative of fingers in contact with that touchpad that determines the finger count: In particular, the circuitry, software or firmware of the touchpad circuitry, such as that shown in FIG. 2, detects a first maxima 85 indicative of a first finger in operative proximity to the touchpad 30, followed by a minima 90 indicative of a space between the fingers, and further followed by another maxima 95 indicative of a second finger operatively coupled to the touchpad 30. Exh. C ['352 patent] at 6:29-35; see also Exh. B [Von Herzen Decl.] at pp. 8-9. Thus,

recognition of the two claimed maxima alone is indicative of the presence of fingers on the touchpad. During prosecution, the applicant confirmed the primacy of detecting two maxima for determining the presence of two fingers. In distinguishing prior art that detected the presence of two fingers on the basis of a more complex algorithm that analyzed the overall capacitive values of the touchpad, the applicant stated expressly that the feature which made the invention unique over the prior art was this direct correlation between maxima and finger count: The present invention uniquely utilizes the detection of two maxima to determine if two fingers are present on the touchpad. Exh. O [Apr. 8, 1998 Amendment] at 352 CFH 0536; see also Exh. P [Von Herzen Tr.] at 102:6APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

17

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

105:8. The remaining claims are independent method and apparatus claims 1 and 35, and claims dependent thereon. These claims are directed to the feature of the invention which detects multiple fingers by detecting the multiple maxima in the profile on the touchpad. This distinguishes the prior art, which calculates multiple fingers by detecting a rapid movement in the total centroid. Exh. O [Apr. 8, 1998 Amendment] at 352 CFH 0535. The present invention addresses this deficiency of the '591 method by detecting two maxima in the profile information. This allows the detection of two fingers being present even if they are both placed down at the same time. Such a method is not shown or suggested by either of the Synaptics patents, which in fact teach away from this method. Id. at 352 CFH 0536. Thus, the patentee represented repeatedly that the principle that set the very invention of the '352 patent apart from the prior art was the detection of the two maxima "to determine" if two fingers are present.5 See also Exh. B [Von Herzen Decl.] at pp. 9-10. Having repeatedly distinguished the prior art on this basis, Elan should not now be permitted to claim that the indication of two fingers may be in response to some other combination of factors. See, e.g., Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (patentee limits claim scope by "clearly characterizing the invention in a way to try to overcome rejections based on prior art"). E. "Means For Selecting An Appropriate Control Function" (Claim 19)
Apple's Construction The recited function is selecting an appropriate control function based on Elan's Construction The recited function is selecting an appropriate control function based on a combination of a

Term "means for selecting an appropriate control

It is precisely this concept--of using strictly the identification of two maxima "to determine" the presence of two fingers and not some other extraneous event(s)--that Apple intends to capture through its proposed construction.
6

5

As explained in Apple's portion of the parties' Joint Case Management Statement Regarding Claim Construction Logistics, there are several means-plus-function limitations of the '352 patent that are indefinite for failure to disclose adequate corresponding structure. D.I. 67 at 5; see also D.I. 84, Exh. A; Exh. B [Von Herzen Decl.] at pp. 17-23. Although the Court has declined to hear a motion for summary judgment of indefiniteness at this stage, indefiniteness is nonetheless "a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction." Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). Accordingly, Apple addresses here the lack of corresponding structure for the "means for selecting an appropriate control function" limitation identified among the parties' top claim construction disputes. Because this limitation is representative of the indefiniteness issue for other limitations, Apple will move for summary judgment of indefiniteness of this and like limitations, as 18
Case No. C-09-01531 RS (PVT)

APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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 "

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.6

number of fingers detected, an amount of time said fingers are detected, and any movement of said fingers. 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.

"For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming." Aristocrat Techs., v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) ("[S]imply reciting `software' without providing some detail about the means to accomplish the function is not enough."); Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-85 (Fed. Cir. 2009). Rather, the specification must disclose the specific algorithm or algorithms that are used to perform the claimed function. See Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc., 2009 U.S. App. LEXIS 26358 at *9 (Fed. Cir. Dec. 4, 2009) (citing Aristocrat, 521 F.3d at 1333), (Exh. Q). Here, the parties agree that the function associated with this means-plus-function element 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."7 The central dispute is whether the specification's disclosure of touchpad hardware (analog multiplexor: 45 Capacitance measuring circuit 70: A to D convertor 80, Microcontroller 60) "and/or software, firmware, or hardware performing the claimed function" is adequate structure (Elan's position), or whether the specification fails to disclose and clearly link the required algorithm to be implemented in such software, firmware or hardware to actually perform the claimed function (Apple's position). There can be no dispute that the invention of the '352 patent is a computer-implemented appropriate under the Court's schedule. 7 The parties continue to dispute the meaning of the term "control function," but that dispute has no bearing on the corresponding structure, if any, for this limitation.
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

19

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

invention to which the holdings of Aristocrat and its progeny apply. In other words, the function of this claim element is to distinguish among the different types of button, mouse, or cursor operations on the basis of three different gesture-related criteria. As such, the process of

"selecting a control function" should, at a minimum, include (1) an algorithm for classifying the gesture related criteria (and any combinations thereof) and (2) some sort of logic for connecting the classifications to particular control functions. However, no such algorithms are disclosed in the specification, nor does Elan point to any. While the specification discloses exemplary

algorithms and flow diagrams for detecting multiple contacts with the touchpad (e.g., Figs. 5, 6, 8 and 9), the specification stops short of providing algorithms for how multiple contacts are used to perform downstream functions. At the very most, the specification discloses a few examples of proposed mappings between specific gestures and control functions. But a few examples does not an algorithm make. In fact, in describing the mapping of gestures to control functions, the specification explains that "such sequences--all of which may be regarded as gestures--can be mapped to control functions in numerous ways . . . ." Exh. C ['352 patent] at 13:16-18. Thus, far from disclosing an algorithm for "selecting an appropriate control function," the specification simply asserts that the claimed function can be done in "numerous ways." See Exh. B [Von Herzen Decl.] at pp. 17-18. Thus, the patent actually tends to acknowledge a substantial gap in its disclosure. Elan also appears to recognize this gap by proposing only basic hardware for a touchpad8 and generic "software, firmware or hardware performing the claimed function" in lieu of a specific algorithm. Of course, "simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to `the corresponding structure, material, or acts' that perform the function, as required by section 112 paragraph 6." Aristocrat, In particular, Elan points to a multiplexer, a capacitance measuring circuit, and an analog to digital converter. While these elements are necessary to measure capacitance, they are merely the building blocks of any capacitance touch sensor. One of ordinary skill in the art would not use a capacitance touch sensor alone 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 and then interpret those values to distinguish control functions or gestures. One of ordinary skill in the art would not understand the '352 specification as disclosing an algorithm for carrying out these tasks. See Exh. B [Von Herzen Decl.] at pp. 17-18.
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF 8

20

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

521 F.3d at 1333. Elan's expert witness, Mr. Dezmelyk, does little better. For instance, Mr. Dezmelyk opines that "[t]he patent also discloses that firmware or software may be programmed to perform the function of selecting a click function or any other appropriate control signal." Exh. M [Dezmelyk Summary] ¶ 31. Yet, Mr. Dezmelyk does not point to any algorithm in the specification for actually performing the claimed functions. Instead, he resorts to the knowledge of one skilled in the art, opining that "[d]etermining a control function and writing a software or firmware routine to interpret contact sequences to implement that control function was well within the knowledge of those skilled in the art at the time of the '352 patent." Id. "That argument, however, conflates the definiteness requirement of section 112, paragraphs 2 and 6, and the enablement requirement of section 112, paragraph 1." Blackboard, 574 F.3d at 1385. "A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function." Id. Thus, Mr. Dezmelyk's "skill in the art" argument is completely irrelevant. In view of the above, Apple respectfully requests that the Court decline to adopt Elan's purported "corresponding structure" and find that no corresponding structure is disclosed for performing the claimed function. II. U.S. PATENT NO. 7,274,353 A. Background

Elan's '353 patent generally claims a touchpad that can function in two of three different input modes: key, handwriting, and mouse modes. Exh. R ['353 patent] at Abstract, 2:1-17. Understanding the '353 patent requires little explanation. Indeed, the entire disclosure of the '353 patent encompasses less than three columns of text. Briefly, the asserted claims of the '353 patent recite a "panel for touch inputting," and, as set forth below, require patterns printed on the panel that represent a mode switch between the different modes and that represent different operations in these modes. Id. at 3:60-4:65; see also id. at Fig. 1. More specifically, in key mode "the key patterns among the printed patterns simulate a keyboard," whereas in "handwriting mode, the handwriting region among the defined regions serves to [provide] handwriting input," and in "mouse mode, the defined regions provide a cursor moving region and [] horizontal and
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

21

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

vertical scroll bars for input for operation." Id. at 2:1-17. B. "A First Pattern On Said Panel For Representing A Mode Switch To Switch Said Touchpad Between A Key Mode And A Handwriting Mode" (Claims 1, 4, 7, and 10)
Apple's Construction A single graphic printed on said panel representing a mode switch that switches from key to handwriting mode and from handwriting to key mode. Elan's Construction Information on the panel visible to the user, indicating where the user can touch to change modes.

Term "a first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a handwriting mode"

The parties dispute whether the phrase "a first pattern on said panel" calls for a pattern printed on the panel (Apple's position) or encompasses any information on the panel visible to the user, including specifically icons displayed on a touchscreen (Elan's position). Because the '353 claims and specification unambiguously describe the "invention" as having printed patterns--and nowhere discloses implementing the invention without such printed patterns--Apple's construction should be adopted. The asserted claims specifically recite "a first pattern on said panel" and "a plurality of second patterns on" a plurality of regions defined on said panel. Exh. R ['353 patent] at 3:61-4:7; see also Exh. B [Von Herzen Decl.] at p. 26 (explaining that, in the context of the '353 patent, one of ordinary skill in the art would understand the claims as having fixed printed patterns). This claim language gives effect to the requirement that patterns are printed on the touchpad, a feature of the invention emphasized throughout the specification, including the Summary of the Invention: According to the present invention, a capacitive touchpad integrated with key and handwriting functions can provide multiple operation modes, such as keypad, handwriting and mouse. The panel of the present touchpad is defined into several regions with plenty of patterns printed thereon for representing the interfaces corresponding to the operation modes. Exh. R ['353 patent] at 2:6-12. By describing "the present invention" and "the present touchpad" as having a panel "defined into several regions with plenty of patterns printed thereon . . . ," this statement unambiguously describes the invention as a whole as containing patterns printed on the touchpad panel. Indeed, the very next sentence of the specification, still describing "the present invention," states that "[i]n the key mode, the key patterns among the printed patterns simulate a
APPLE'S OPENING CLAIM CONSTRUCTION BRIEF

22

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

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

keyboard." Id. at 2:12-13. This repeated characterization of the "present invention" within the "SUMMARY OF THE INVENTION" section is "strong evidence" that the claims should be read to encompass only patterns printed on the panel, and not simply any information visible through the panel. Scimed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) ("the characterization of [a limitation] as part of the `present invention' is strong evidence that the claims should not be read to encompass the opposite structure."); Netcraft Corp. v. Ebay, Inc., 549 F.3d 1394, 1398 (Fed. Cir. 2008) (explaining that a description of "the present invention" ordin