Elan Microelectronics Corporation v. Apple, Inc.

Filing 88

Declaration of Sean P. DeBruine in Support Elan Microelectronics Corporation's Opening Claim Construction Brief (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L) filed by Elan Microelectronics Corporation. (DeBruine, Sean) (Filed on 5/7/2010) Modified on 5/10/2010 (bw, COURT STAFF).

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EXHIBIT L Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 1 of 17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 2O 21 22 23 24 25 26 27 28 Yitai Hu (SBN 248085)(yhu@akingump.com) Sean P. DeBruine (SBN 168071)(sdebruine~) Ming-Tao Yang (SBN 221295)(myang@akingump.com) Hsin-Yi Cindy Feng (SBN 215152)(cfen~akin~ump.com) AKIN GUMP STRAUSS HAUER & FELD LLP 3000 E1 Camino Real Two Palo Alto Square, Suite 400 Palo Alto, California 94306 Telephone: 650-838-2000 Facsimile: 650-838-2001 Attorneys for Plaintiff and Counterdefendant ELANTECH DEVICES CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION ELANTECH DEVICES CORP., Plaintiff, VS. SYNAPTICS, INC. and AVERATEC, INC. Defendants. ) Case No. 3:06-CV-01839 CRB ) ) ELANTECH DEVICES CORP.'S REPLY ) CLAIM CONSTRUCTION BRIEF FOR U.S. ) PATENT NO. 5,825,352 ) ) ) ) ) Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028462 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 2 of 17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 2O 21 22 23 24 25 26 27 28 Elantech's Opening Claim Construction Brief for U.S. Patent No. 5,825,352 TABLE OF CONTENTS INTRODUCTION ...............................................................................................................1 CLAIM CONSTRUCTION FOR CLAIMS 1 AND 18 OF THE '352 PATENT ................ 1 "Scanning the Touch Sensor" Means "Examining Information Associated with the Touch Sensor". ........................................................................................... 2 1) The Intrinsic Evidence Describes "Scanning" as Examining or Processing Touchpad Information to Identify Finger Presence, which the Dictionary Definition also Supports .................................................................................. 3 The Prosecution History of '352 Patent Directly Contradicts Synaptics' Narrow Reading ..................................... 4 2) 3) The Claim Term of "Following" Merely Indicates Relevant Location of the Two Maxima and One Minimum and Connotes No Sequence of Assigning ............................................. 5 "First Maxima," "Minima," and "Second Maxima" Can be Properly and Respectively Construed as "First Peak Value," "Lowest Value," and "Second Peak Value" in Corresponding Finger Profiles ........................................................ 5 1) 2) 3) 4) Synaptics Uses the Terms "Maxima" and "Peaks" Consistently with Elantech's Proposed Construction ................. 6 Synaptics Failed to Address Two Main Flaws of Its Proposed Construction: Direct Contradictions by Specification Teachings and Prosecution History ....................... 8 The Claim Term of "Following" Merely Indicates Relevant Location of the Two Maxima and One Minimum and Connotes No Particular Scanning Order ................................... 1 1 Synaptics' Reliance on Claim Differentiation Principle is Misplaced ...................................................................................... 11 The Patent Clearly Discloses Microprocessor 60 as the Structure Corresponding to the "Means for Indicating .... ". ............................................... 12 The Synaptics' Misleading Statements Regarding Its Own Patent's Priority Over '352 Patent and the '352 Patent's Prosecution History Should be Ignored ...................................................................................................................13 III. CONCLUSION ..................................................................................................................13 CASE NO. 3:06-CV-01839 CRB ELN028463 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 3 of 17 1 2 TABLE OF AUTHORITIES CASES 3 Markman v. Westview Instruments, Inc. 4 5 6 7 8 9 52 F.3d 967, 981 (Fed. Cir. 1995)(en banc), aff'd, 517 U.S. 370 (1996) ......................... Tandon Corp. v. United States International Trade Comm'n 831 F.2d 1017, 1023-24 (Fed. Cir. 1987) ........................................................................ 11 Vitronics Corp. v. Conceptronic, Inc. 90 F.3d 1576, 1583 (Fed. Cir. 1996) ................................................................................. 3 OTHER AUTHORITIES 3 4 10 The IEEE Standard Dictionary of Electrical and Electronic Terms, 947 (6th Ed.) ...................... 11 12 13 14 15 16 17 18 19 2O 21 22 23 24 25 26 27 28 ii Elantech's Opening Claim Construction Brief for CASE NO. 3:06-CV-01839 CRB U.S. Patent No. 5,825,352 ELN028464 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 4 of 17 1 2 3 4 5 6 7 8 9 I. INTRODUCTION The Court need only resolve two primary claim construction questions for Elantech's United States Patent No. 5,825,352 ("the '352 patent")1. They are (1) whether the simple term of "scanning" should, as proposed by Synaptics, be construed as "measuring traces" and "assigning them to a sequence corresponding to their physical order..." solely based on expert testimony when no intrinsic record supports such a narrow reading; and (2) whether the easy-to-understand terms of "maxima" and "minima" should, as proposed by Synaptics, be redefined respectively as "the point at which the measured values cease to increase and begin to decrease" and "the point at which the measured values cease to decrease and begin to increase" when the teachings and 10 drawings from the '352 patent directly contradict Synaptics' re-defining of those terms. 11 Under the Federal Circuit case law, "no" is the only answer to both questions. Synaptics' 12 and its expert's overly complicated reading of the simple term of"scanning," "minima" and 13 "maxima" violates fundamental principles of claim construction. The claim construction process 14 must remain focused on how the patentee used the claim term in the claims, specification, and 15 prosecution history - not how an expert defines the term. Indeed, expert testimony must be viewed 16 as less reliable than the patent and its prosecution history in determining how to read claim terms. 17 II. 18 CLAIM CONSTRUCTION FOR CLAIMS 1 AND 18 OF THE '352 PATENT Synaptics' attempts to alter the claims of the '552 patent using expert testimony should be 19 rejected, and the claim terms should be given their ordinary meaning. The '352 patent relates to 2O touchpad devices that can detect the presence of two or more fingers (or other objects). The 21 invention of claim 1 is simply a method of examining touch sensor information to identify two peak 22 values with one lowest value in between to determine the presence of two fingers, and providing an 23 indication in response to that identification. Claim 18 also contains similar limitations but is 24 directed to an apparatus for detecting two fingers. The claim language as written in both claims, 25 along with the intrinsic record, makes it clear that the claimed method for detecting a multi-finger 26 presence does not require any particular order or manner of scanning, or any particular nature of the 27 1 The '352 patent is in the record as Exhibit A to the January 29, 2007 Declaration of Sean P. 28 DeBruine ("DeBruine Decl."). 1 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028465 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 5 of 17 1 2 3 4 5 6 7 8 9 first and second maxima and the minimum between them. Elantech believes that these claims are clear, and could be understood by the jury on their face. To assist the jury and to respond to Synaptics' request for providing claim constructions, Elantech proposed constructions that are based on the intrinsic record, not an expert's selective reading of dictionaries and constantly evolving definitions. In contrast, Synaptics is asking the Court to turn the simple words of "scanning," "maxima," and "minima" into peculiar definitions that are not likely to be decipherable by the jury and are inconsistent with the patent. A. "Scanning the Touch Sensor" Means "Examining Information Associated with the Touch Sensor" As Elantech's Opening Brief explained, its construction of"scanning" is based on the 10 meaning of the term in the context of the '352 patent and should be adopted because (1) the patent 11 specification expressly contradicts Synaptics' initial construction of "sequentially measuring the 12 traces... ;" (2) the '352 patent specification describes "scanning" as examining or processing 13 touchpad information to identify finger presence; and (3) the dictionary definitions from Elantech 14 and Synaptics similarly characterize scanning as examining information and contradict Synaptics' 15 initial construction. 16 Rather than concede that its initial construction was improper, Synaptics now proposes an 17 entirely different construction of this term: "measuring the traces in the touch sensor and assigning 18 them to a sequence corresponding to their physical order on the touch sensor." Synaptics' Opp. at 3, 19 2/12/2007 Wolfe Decl. at 4. However, this re-ordering of the words does not change the effect. 2O Synaptics is still attempting to impose the additional limitation of a sequence. That reading is still 21 contradicted by the patent which says a scan may be sequential or concurrent. '352 patent at 7:3622 40. Thus, Synaptics' new construction unduly imposes a narrow reading of the simple term of 23 "scanning the touch sensors" for the same reasons Elantech has previously discussed. In essence, 24 Synaptics is asking the Court to disregard the broad teaching and multiple embodiments disclosed 25 in the specification and construe the term based solely on Synaptics' expert testimony. 26 The only specification language cited by Synaptics does not even support its position. It 27 merely says that "[t]he scan process measures the values of finger-induced capacitance for each of 28 2 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028466 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 6 of 17 1 2 3 4 5 6 7 8 9 10 11 12 13 the conductors, and stores the values in RAM .... " Synaptics' Opp. at 4. Synaptics identified no instance where its proposed construction of"assigning [the measured traces] to a sequence corresponding to their physical order on the touch sensor" can be found in the '352 patent specification or prosecution history. The only support for Synaptics' position is the allegedly "uncontested testimony of Dr. Wolfe," the same expert who was forced to re-write his construction of this term after Elantech pointed out that it contradicted the patent disclosure. Synaptics Opp. at 5, 2/12/2007 Wolfe Decl. at 4. Again, the sentence immediately preceding the passage relied on by Synaptics states that touch sensors "may be scanned sequentially or concurrently, depending on the hardware implementation." ' 352 patent at 7:36-37 (emphasis added). In other words, if the scanning as claimed required a separate "assigning" operation as Synaptics suggested, a concurrent scanning would not necessarily result in assigning scanning results to any particular sequence. Synaptics' attempt to vary the meaning of claim term based solely on expert testimony should be rejected. Indeed, extrinsic evidence, such as expert testimony, "is to be used for the 14 court's understanding of the patent, not for the purpose of varying or contradicting the terms of the 15 claims." Markman v. Westview Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir. 1995)(en banc), aft'd, 16 517 U.S. 370 (1996). Additionally, the Federal Circuit has held that construing a claim to exclude a 17 preferred embodiment "is rarely, if ever, correct and would require highly persuasive evidentiary 18 support." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Synaptics fails 19 to offer any evidentiary support to justify its proposed attention of the claim language. 2O 21 22 1) The Intrinsic Evidence Describes "Scanning" as Examining or Processing Touchpad Information to Identify Finger Presence, which the Dictionary Definition also Supports As illustrated by the '352 patent specification and Figures 1 and 3 reproduced below, the 23 two-finger presence may be identified by simply identifying two peak values and one lowest value 24 between the two peak values. 25 26 27 28 3 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028467 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 7 of 17 1 2 3 4 5 6 7 8 9 Sensing the proximity of multiple fingers to a touch sensor, as illustrated in Figure 1, "may be implemented based on any conventional touch sensing technology," such as capacitive, resistive, surface wave, strain, pressure, and optical sensing. '352 patent at 2:18-22, 1:18-32. Accordingly, the specification does not limit the invention to any particular "scanning." For example, scanning a touch sensor to identify the high and low values as illustrated in Figure 3 includes having "the values of finger-induced capacitance.., processed" to "detect whether one or more fingers is in operative contact" with a touchpad. Id. at 6:14-17. In addition to the specification, an authoritative dictionary cited by both Elantech and Synaptics also defines scanning as "the process of examining information in a systematic manner." 10 DeBruine Decl., Ex. D (The IEEE Standard Dictionary of Electrical and Electronic Terms, 947 (6th 11 12 13 14 15 Ed.)). However, despite the consistency between the specification and the most relevant dictionary, Synaptics seeks to impose a narrow reading of"measuring the traces" and "assigning them to a sequence corresponding to their physical order..." on the easy-to-understand term "scanning." Synaptics' Opp. at 3. Synaptics' only justification for its peculiar definition is its expert's selfserving testimony in combination with two other dictionary definitions not aligned with the intrinsic 16 record. 2/12/2007 Wolfe Decl. at 5. None of those definitions equates scanning with "measuring." 17 Id. Thus, Synaptics is left with nothing but unsupported testimony of its expert to support it 18 construction. 19 2O 21 transformation of a single term of"scanning the touch sensor" into two separate and distinct 22 limitations of"measuring the traces in the touch sensor" and "assigning them to a sequence 23 corresponding to their physical order on the touch sensor" is directly contradicted by the 24 prosecution history. Synaptics' Opp. at 3. Specifically, the file history contradicts the inclusion of 25 "trace values" in Synaptics' proposed construction. The prosecution history states that multiple 26 fingers are detected by "detecting the multiple maxima in the [finger] profile on the touchpad," not 27 by measuring the traces as narrowly defined by Synaptics. DeBruine Decl., Ex. C at 3, 4. (Amd. B, 28 4 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB 2) The Prosecution History of '352 Patent Directly Contradicts Synaptics' Narrow Reading In addition to the lack of support from the '352 specification and file history, Synaptics' ELN028468 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 8 of 17 1 2 3 4 5 6 7 8 9 April 6, 1998.) This language clearly supports Elantech's proposed construction that "scanning the touch sensor" means "examining information associated with the touch sensor." The reference to "trace values" and "assigning them to a sequence corresponding to their physical order..." in Synaptics' definition, on the other hand, finds no support in the file history. 3) The Claim Term of "Following" Merely Indicates Relevant Location of the Two Maxima and One Minimum and Connotes No Sequence of Assigning The use of the term "following" according to the plain language itself merely explains the relative locations of the maxima and minimum, as having "a minima following the first maxima" and "a second maxima...following said minima." '352 patent at 16:17-20. Synaptics nevertheless 10 argues that the claim language of "following" requires there to be "an ordered sequence" associated 11 with the claimed "scanning" and therefore "scanning" requires "assigning the measured trace values 12 from the touch sensor to a sequence corresponding to their physical order on the touch sensor." 13 Synaptics' Opp at 7. Synaptics provides no intrinsic evidence to support this position but relies 14 solely on its expert declaration. Id. In fact, there is no intrinsic evidence to support this argument. 15 In essence, Synaptics is asking the Court not to follow the claim language itself or the intrinsic 16 record but to rewrite the claim so the term "following" is somehow connected to a remotely located 17 term of"scanning." Synaptics relied on that attenuated connection to transform the term "scanning" 18 into "measuring the traces" and "assigning them to a sequence corresponding to their physical order 19 2O 21 22 .... " The Court should reject Synaptics' attempts to rewrite the claims. B. "First Maxima," "Minima," and "Second Maxima" Can be Properly and Respectively Construed as "First Peak Value," "Lowest Value," and "Second Peak Value" in Corresponding Finger Profiles The three claim phrases relating to the maxima and minima limitations are similar and can 23 be discussed jointly. Elantech proposed three parallel constructions: (1) "scanning the touch sensor 24 to... identify a first maxima in a signal corresponding to a first finger" means "identify a first peak 25 value in a finger profile obtained from scanning the touch sensor;" (2) "identify a minima following 26 the first maxima" means "identify the lowest value in the finger profile that occurs after the first 27 peak value, and before another peak value is identified;" and (3) "identify a second maxima in a 28 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028469 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 9 of 17 1 2 3 4 5 6 7 8 9 signal corresponding to a second finger following said minima" means "after identifying the lowest value in the finger profile, identify a second peak value in the finger profile." As Elantech's Opening Brief explained, Elantech's construction given above is based on the meaning of the term in the context of the '352 patent and should be adopted because (1) skilled artisans would understand the "maxima" and "minima" terms as Elantech's proposed construction; (2) the '352 patent specification and prosecution history support Elantech's construction; (3) the '352 patent specification and prosecution history directly contradict Synaptics' proposals. As part of Synaptics' proposals, maxima is defined as "the point at which the measured values cease to increase and begin to decrease" and minima is defined as "the point at which the measured values 10 cease to decrease and begin to increase" solely based on expert testimony and selective reading of 11 dictionary definitions. Those definitions again impose unwarranted restrictions and overcomplicate 12 the claimed "maxima" and "minima" terms that, as written, can be easily understood by the Court 13 and the jury. Again, Synaptics is asking the Court to disregard the intrinsic evidence and construe 14 the term solely based on expert testimony and Synaptics' selective reading of a dictionary. 15 16 17 claimed "first maxima" simply means a first peak value, which can be derived by examining a 18 finger profile. 19 2O 21 22 23 24 As illustrated in Figure 3, the "first maxima" as claimed, or more correctly (grammatically 25 speaking) "first maximum," simply means a first peak value 85, which exists in a peak area of the 26 finger profile and may be followed by a minimum or lowest value 90 and another maximum or 27 second peak value 95. '352 patent at Fig. 3, 6:27-38. igure 4 similarly illustrates a first peak value F 28 6 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB 1) Synaptics Uses the Terms "Maxima" and "Peaks" Consistently with Elantech's Proposed Construction The '352 patent specification and Figures 3 and 4 reproduced below both suggest that the FIG. 4. ELN028470 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 10 of 17 1 2 3 4 5 6 7 8 9 105, which is followed by a local minimum or lowest value 100 and a second peak value 110. Id. at 6:39-47. The specification's use of Xpeakl as a "variable to store the value of the first peak X value" and Xpeak2 as a "variable to store the value of the second peak X value." also suggests the consistent use of a local peak to represent a maximum. Id. at 8:64, 9:4. Therefore, Elantech's proposed construction of the claim term "scanning the touch sensor to .. identify a first maxima in a signal corresponding to a first finger" as "identify a first peak value in a finger profile obtained from scanning the touch sensor" and a similar construction for the claim term of"identify a second maxima in a signal corresponding to a second finger" is fully supported by the intrinsic evidence. Indeed, Synaptics' own statements in its Opposition Brief make it clear 10 that a maximum is generally understood as a peak and the two terms of maximum and peak are used 11 interchangeably. Specifically, Synaptics stated that other than Mount Everest, "every other 'peak' 12 or 'plateau' around Mount Everest, or anywhere else, is a 'local' maximum." Synaptics Opp. at 8 13 (emphasis added) Therefore, Elantech and Synaptics appear to be in agreement that the "first 14 maxima" can be ordinarily and appropriately defined as a "first peak" or a "first peak value." 15 Despite the fact that Synaptics uses the terms "maximum" and "peak" interchangeably, it 16 nevertheless challenged Elantech's position not by taking on Elantech's proposed constructions, but 17 by redefining "first peak value" or "second peak value" as a "global peak" and then arguing that a 18 definition of "maxima" as "global peak" is inconsistent with the plural maxima identified in the 19 '352 patent. Id. at 11. Synaptics' self-serving redefinition of Elantech's proposed construction is 2O not acceptable. Nowhere in Elantech's proposed construction does it use the term "global" or 21 characterize the proposed construction of"first peak value" or "second peak value" as a global peak 22 value. Indeed, Elantech's proposed constructions of"first maxima" as "first peak value" and 23 "second maxima" as "second peak value" show that there are at least two peak values as required by 24 the plain language of the claims, and that Elantech's constructions do not require a single, global 25 peak value. DeBruine Decl., Ex. B (Jt. CC Stmt.) at Ex. C, Claim Terms 16 and 18. Therefore, 26 Synaptics' attacks on Elantech's proposed construction are meritless. In fact, the Court need not 27 consider those attacks, because Synaptics' own statements about peaks demonstrate that Synaptics' 28 7 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028471 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 11 of 17 1 2 3 4 5 6 7 8 9 own use of the same word does not limit a "peak" to a global peak and allows multiple peaks to coexist. Synaptics Opp. at 8. (Other than Mount Everest, "every other 'peak' or 'plateau' around Mount Everest, or anywhere else, is a 'local' maximum.") (emphasis added). 2) Synaptics Failed to Address Two Main Flaws of Its Proposed Construction: Direct Contradictions by Specification Teachings and Prosecution History Elantech, in its Opening Brief, discussed why Synaptics proposed construction of "measuring the trace values of the touch sensor corresponding to a first finger and determining the ooint at which the measured values cease to increase and begin to decrease" and Synaptics' similar definition for the second maxima impose unwarranted restrictions and are directly contradicted by 10 the specification, the drawings, and the prosecution history. Elantech used the following drawings 11 12 13 14 15 16 17 18 First, the first maximum 85 as illustrated in Figure 3 may be the point at which values begin Upside-down version of Figure 3 to illustrate two main flaws of Synaptics' proposed construction. 19 to decrease, but not the point at which values cease to increase, which occurs at a separate location, 2O i.e., a point to the left of first maximum 85 and of the same level as first maximum 85. Similarly, 21 the second maximum 95 may be the point at which values begin to decrease, but not the point at 22 which values cease to increase, which occurs at a separate location, i.e., a point to the left of second 23 maximum 95 and of the same level as second maximum 95. Synaptics' definition of the claimed 24 "minima" as "the point at which the measured values cease to decrease and begin to increase" is 25 also flawed for the same reason - the minimum 90 as illustrated in Fig. 3 simply does not qualify. 26 Second, the fact that a maximum could be a maximum negative level or a negative peak directly 27 contradicts Synaptics' construction as "the point at which the measured values cease to increase and 28 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028472 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 12 of 17 1 2 3 4 5 6 7 8 9 begin to decrease," which only occurs when a finger profile remains positive and does not occur at negative peaks for a finger profile having two negative maxima or peaks. Synaptics failed to provide any response regarding the first flaw, because Synaptics' definition of"first maxima" as a single point "at which the measured values cease to increase and begin to decrease" is clearly not reconcilable with the teachings in the specification and the drawings. The very specific "point" as required by Synaptics' proposed construction, which is based not on the intrinsic evidence but on a selected definition from many dictionary definitions, simply does not exist in the embodiments as illustrated by the drawings of the '352 patent. Indeed, neither point 85 nor point 95 qualifies as a maximum under Synaptics' construction, but they both 10 are maxima according to the specification. '352 patent at 6:29-35. 11 Synaptics appeared to justify its construction using the algorithm in Fig. 6-1. Synaptics' 12 Opp. at 9-10. However, the algorithm in Fig. 6-1, which Synaptics characterized as "exactly 13 correspond[ing]" to Synaptics' definition, does not match or correspond to Synaptics' proposed 14 construction at all. Id. For example, as the portion ~fFig. 6-1 below illustrates, in identifying a 15 first maximum or first peak value Xpeak in the specific embodiment that Synaptics relied upon, the 16 algorithm identifies Xpeak only as a peak value that occurs before the value stops increasing, i.e., 17 where X(N) is no longer larger than X(N-1). DeBruine Decl., Ex. A, Fig. 6-1 ('352 patent). 18 19 2O 21 22 23 Potion of Fig. 6-1 of '352 patent Accordingly, even with the specific and narrowing embodiment Synaptics identified to suppo~ its position, the algorithm does not require a point "at which the measured values cease to 24 increase and begin to decrease." The algorithm therefore does not, as presented by Synapdcs, 25 "exactly correspond" to Synaptics' proposed const~ction of"measuring the trace values of the 26 touch sensor corresponding to a first finger and determining the point at which the measured values 27 28 9 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028473 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 13 of 17 1 2 3 4 5 6 7 8 9 10 11 cease to increase andbegin to decrease." DeBruine Decl., Ex. B at Ex. C, Claim Term 16 (Jt. CC Stmt.) As another example, referring to a different portion ~fFig. 6-1 reproduced below, in identifying a minimum or lowest value Xvalley, the algorithm identifies Xvalley only as a lowest value that occurs when the value starts to increase, i.e. where X(N) is no longer equal to or smaller than X(N-1). '352 patent, Fig. 6-1. Another Portion of Fig. 6-1 of '352 patent Again, the algorithm does not require a point "at which the measured values cease to 12 decrease and begin to increase." The algorithm does not, as presented by Synaptics, "exactly 13 correspond" to Synaptics' proposed construction of"measuring the trace values of the touch sensor 14 following, in scan order, after the first maxima and determining the point at which the measured 15 values cease to decrease and begin to increase." DeBruine Decl., Ex. B at Ex. C, Claim Term 17 16 (Jt. CC Strut.) 17 Regarding the second flaw Elantech identified, Synaptics' response was that "the 'maxima' 18 and 'minima' could be negative 'maxima' and 'minima' and Synaptics' proposed definitions become 19 applicable when a signal is examined using its "absolute value." Synaptics' Opp. at 10, 2/12/2007 2O WolfDecl. at 14. However, Synaptics' proposed construction of"maxima" as "the point at which 21 the measured values cease to increase and begin to decrease," with or without Synaptics' further 22 explanation, simply does not apply to a negative maximum as illustrated above. A negative 23 maximum is at best a point where the measured values "cease to decrease and begin to increase." 24 The fact that a maximum could be a maximum negative level or negative peak directly contradicts 25 Synaptics' construction as "the point at which the measured values cease to increase and begin to 26 decrease," which only occurs when a finger profile remains positive. In contrast, Elantech's 27 proposed constructions of "first maxima" as "first peak value" and "second maxima" as "second 28 10 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028474 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 14 of 17 1 2 3 4 5 6 7 8 9 peak value" are equally applicable to positive or negative peaks without the need for further explanation. Indeed, Synaptics' expert conceded that Elantech's proposed construction is "consistent with the inventors' statement during prosecution." 2/12/2007 Wolf Decl. at 15. 3) The Claim Term of "Following" Merely Indicates Relevant Location of the Two Maxima and One Minimum and Connotes No Particular Scanning Order As discussed under Section II-A-(3), the use of the term "following" according to the plain language itself merely explains the relative locations of the maxima and minimum, as having "a minima following the first maxima" and "a second maxima...following said minima." DeBruine Decl., Ex. A at 16:17-20 ('352 patent). Synaptics again argued that the claim language of 10 "following" requires there to be a "scan order" when the claim language itself has none. Synaptics' 11 Opp. at 12. The Court should reject Synaptics' attempts to rewrite the claims for similar reasons 12 discussed under Section II-A-(3). Furthermore, the '352 specification makes it clear that the touch 13 sensor may be concurrently scanned and the finger-induced capacitance values can then be loaded 14 into a memory. '352 patent at 7:34-40. Then, the maxima and minima can be identified. Id. at 15 6:14-37. Accordingly, the specification descriptions require no particular order and suggest that 16 those values may be obtained concurrently, rather than sequentially. The claim itself and the 17 18 19 specification therefore do not require any "scan order" as suggested by Synaptics. 4) Synaptics' Reliance on Claim Differentiation Principle is Misplaced Synaptics argues that the doctrine of claim differentiation renders Elantech's claim 2O construction as improper. Synaptics' Opp. at 12. However, the doctrine of claim differentiation is 21 merely a guide, not a rule, and a claim is to be construed based on the intrinsic evidence and not 22 solely by looking at how dependent claims differ from independent ones. Although the doctrine of 23 claim differentiation means that different claims are presumed to be of different scope, describing 24 claim elements or limitations in different words does not invariably change the scope of the claim. 25 Tandon Corp. v. United States lnt'l Trade Comm'n, 831 F.2d 1017, 1023-24 (Fed. Cir. 1987). 26 Therefore, the fact that dependent claims 7 and 21 of the '352 patent describe maxima as peaks do 27 not preclude the Court from construing maxima as peak values based on the intrinsic evidence. 28 11 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028475 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 15 of 17 1 2 3 4 5 6 7 8 9 C. The Patent Clearly Discloses Microprocessor 60 as the Structure Corresponding to the "Means for Indicating .... " While this claim term was not elected by the parties as among the eight terms the Court will initially construe pursuant to its Order of February 12, 2007, Elantech will address Synaptics' erroneous arguments so that the record is complete. Consistent with its tendency to ignore aspects of the patent specification that do not support its litigation positions, Synaptics and its expert claim that there is no teaching in the patent that microcontroller 60 is the structure that performs the function of "providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima." Syn. Opp. Br. at 13. In particular, Synaptics claims that one of ordinary skill would have to "guess" to determine what structure performs this function. 10 Id. That is simply not the case. 11 One of ordinary skill in the art is defined by Synaptics as having a degree in electrical 12 engineering and three years or so of experience in touchpad design. 2/12/2007 Wolfe Decl., 4. 13 14 Such a person actually reading the '352 patent would clearly understand that the corresponding structure is microcontroller 60 running appropriate software or firmware. First, the patent explains 15 that microcontroller 60 operates to determine a finger profile for one or more fingers. '352 patent at 16 5:49-51. The output of microcontroller 60 is supplied to the host computer, such as a PS/2 17 interface, RS-232 interface or an Apple D esktop Bus interface. Id. at 5:53-55; Fig 2 (output of 18 microcontroller 60 is "interface to PC or other device.") The patent also explains that the operation 19 of the touchpad of Fig. 2 is controlled in either firmware, software or hardware. Id. 5:32-35 and 2O 7:1-3. The function of detecting the simultaneous presence of two fingers and reporting that 21 presence to the host is described as being carried out with firmware or software generally consistent 22 with the flow diagram in Fig. 5 and algorithm in Fig. 6. Id. at 7:3-6. At various points in the flow 23 chart diagram "reports" are made when two fingers are detected. See, e.g. Fig. 5, steps 540 and 555. 24 A "report" means information transmitted to the host, Id. at 7:27-29, which again is the province of 25 microcontroller 60. Id. at 5:52-55. Thus, the patent clearly teaches that microcontroller 60 is 26 programmed to detect the presence of two fingers and provide an indication of that fact to the host 27 28 12 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028476 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 16 of 17 1 2 3 4 5 6 7 8 9 computer. Synaptics uses unsupported expert testimony in an attempt to create a claim construction issue where none exists. D. The Synaptics' Misleading Statements Regarding Its Own Patent's Priority Over '352 Patent and the '352 Patent's Prosecution History Should be Ignored Finally, Elantech will address two extraneous arguments raised by Synaptics which have no bearing whatsoever on the Courts' claim construction analysis. Rather, those arguments appear to have been raised in an attempt to unduly bias the Court. First, Synaptics asserts bragging rights for allegedly being the first to invent multiple finger detection by pointing to its newly issued U.S. Patent No. 7,109,978 ("the '978 patent"). Synaptics alleges that its patent has a priority date earlier than that of the '352 patent. Synaptics Opp. Br. at 2:1-13. The Court should ignore this discussion 10 because it is completely irrelevant to the claim construction issues being briefed. Nowhere does 11 Synaptics offer any discussion of how or why its '978 patent supports Synaptics' claim construction 12 position or refutes Elantech's claim construction position. Furthermore, Synaptics' discussion of its 13 '352 patent raises issues of validity and non-infringement that are completely outside of the scope 14 of a claim construction hearing. As such, this argument should be dismissed for what it is: an 15 attempt to muddy the waters. 16 Synaptics also suggested, without stating how it is relevant to the Court's construction, that 17 Elantech's predecessor somehow "abandoned its original application." Kramer Decl. at 3. The 18 Court should ignore this statement, not only because it bears no relationship to claim construction, 19 but because Synaptics failed to explain to the Court that such an abandonment is part of 2O practitioner's common practice when applicants continue to prosecute patent applications using a 21 continuation application. See Kramer Decl., Ex. C (notice of abandonment from the file history). 22 Indeed, Synaptics' '978 patent originated from an abandoned application. See Kramer Decl., Ex. E, 23 ('978 patent cover page). 24 III. CONCLUSION 25 As discussed above, Elantech's proposed constructions for the disputed terms of the '352 26 patent follow the straightforward language of the claims and are supported by the intrinsic evidence. 27 In contrast, Synaptics' proposed constructions limit the claim language not to any particular 28 13 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028477 Case 3:06-cv-01839-CRB Document 78 Filed 02/21/2007 Page 17 of 17 1 2 3 4 5 6 7 8 9 embodiments in the specification of the '352 patent, but to peculiar meanings sponsored by Synaptics' expert supported only by his selective reading of dictionary definitions, an approach specifically rejected by the Federal Circuit. No explicit or different definitions, or disavowal or disclaimer of claim scope, appear in either the '352 patent itself or in its prosecution history that would warrant the unduly narrow claim constructions proposed by Synaptics. Synaptics' proposed constructions also have several flaws, making them not reconcilable with the intrinsic evidence. Accordingly, Elantech respectfully requests that the Court adopt its constructions and rej ect those offered by Synaptics. 10 Dated: February 21, 2007 11 12 13 14 15 16 17 18 19 2O 21 22 23 24 25 26 27 28 6045046 AKIN GUMP STRAUSS HAUER & FELD LLP By: /s/ SEAN P. DEBRUINE Attorney For Plaintiff and Counterdefendant ELANTECH DEVICES CORPORATION 14 Elantech's Reply Claim Construction Brief for U.S. Patent No. 5,825,352 CASE NO. 3:06-CV-01839 CRB ELN028478

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