Anascape, Ltd v. Microsoft Corp. et al

Filing 185

SUR-REPLY to Reply to Response to Motion re 176 MOTION for Partial Summary Judgment of Noninfringement of PSVC Claims filed by Anascape, Ltd. (Attachments: # 1 Exhibit S)(Baxter, Samuel)

Anascape, Ltd v. Microsoft Corp. et al

Doc. 185 Att. 1

EXHIBIT S

Dockets.Justia.com

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS LUFKIN DIVISION ANASCAPE, LTD. * DOCKET 9:06CV158 * * 10:00 A.M. V. * * AUGUST 22, 2007 * MICROSOFT CORP., ET AL * BEAUMONT, TEXAS -------------------------------------------------------------VOLUME 1 OF 1, PAGES 1 THROUGH 113 REPORTER'S TRANSCRIPT OF CLAIM CONSTRUCTION HEARING BEFORE THE HONORABLE RON CLARK UNITED STATES DISTRICT JUDGE --------------------------------------------------------------

12 APPEARANCES: 13 FOR THE PLAINTIFF: 14 15 16 17 18 19 20 21 22 23 24 25 J. THAD HEARTFIELD THE HEARTFIELD LAW FIRM 2195 DOWLEN ROAD BEAUMONT TEXAS 77706
Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

THEODORE STEVENSON, III ANTHONY MATTHEW GARZA LUKE FLEMING MCLEROY MCKOOL SMITH - DALLAS 300 CRESCENT COURT SUITE 1200 DALLAS, TEXAS 75201 ROBERT M. PARKER PARKER, BUNT & AINSWORTH 100 E. FERGUSON SUITE 1114 TYLER TEXAS 75702 BRAD ARMSTRONG (CLIENT REPRESENTATIVE)

FOR THE DEFENDANT MICROSOFT CORP.:

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FOR THE DEFENDANT MICROSOFT CORP. (CONTINUED): STEPHEN J. JONCUS J. CHRISTOPHER CARRAWAY JOSEPH T. JAKUBEK KLARQUIST SPARKMAN 121 SW SALMON STREET SUITE 1600 PORTLAND OREGON 95204 FOR THE DEFENDANT NINTENDO OF AMERICA, INC.: LAWRENCE LOUIS GERMER CHARLES W. GOEHRINGER, JR. GERMER GERTZ 550 FANNIN SUITE 500 BEAUMONT TEXAS 77701 ROBERT J. GUNTHER, JR. WILMER HALE - NEW YORK 399 PARK AVENUE NEW YORK NEW YORK 10022 COURT REPORTER: CHRISTINA L. BICKHAM, CRR, RMR FEDERAL OFFICIAL REPORTER 300 WILLOW, SUITE 221 BEAUMONT, TEXAS 77701

PROCEEDINGS REPORTED USING COMPUTERIZED STENOTYPE; TRANSCRIPT PRODUCED VIA COMPUTER-AIDED TRANSCRIPTION.

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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change, "changes in conductivity." MR. STEVENSON: I think that's what the second half

of the sentence says, where it says "allowing a greater flow of electric current through it." jury -THE COURT: Well, if it's repetitive -- although And when you're instructing the

that may not be the most elegant way of doing it -- what, I guess, on the merits or scientific objection do you have for me saying it twice? MR. STEVENSON: objection. I don't have a scientific

I really have more of an objection of, I don't want

to embed an argument into the definition where Microsoft can come back later and argue to the jury that this envisions that we're only encompassing the volume effect. And given that

we're putting essentially a redundant term in with the rest of it, my sort of red flags are going off as to why we would do that. THE COURT: All right. All right. Let's take a look at the Now

"pressure-sensitive variable-conductance analog sensor." we're getting into the sensor devices.

And let me ask Betty to go ahead and put up on the screen some language from the '084 patent which is column 6, lines 53 to 55. Oh, and let me back up just on that last -- I keep

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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forgetting this for the record. The change that defendant would have made to that previous definition would have been: "Pressure-sensitive

variable-conductance material" means "a substance that changes in conductivity to allow a greater flow of electric current through it as pressure is applied to it." And I understood from defendant that that would be acceptable to you. Is that correct? Yes, your Honor. And from plaintiff, you thought it was

MR. JONCUS: THE COURT:

redundant and may allow some confusion and arguments in an attempt by defendant to limit your embodiments. MR. STEVENSON: THE COURT: All right. '084 patent. And looking at lines 53 to 55, column 6 -- and this is cited. It talks about: "At this point in the disclosure it Right.

Okay. Go ahead and put that up there from the

should be quite clear that the pressure-sensitive variable-conductance material is a very important aspect." think the same language is included in the '802 patent at column 6, lines 49 to 50. And then we get into the '802 patent -And go ahead and put this up if you would, Betty, the '802 patent, column 2, lines 55 and 59. Oh, okay. You've I

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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got them up there.

All right, good.

In other words, in several places it talks about the present invention or it being -- in the '084 patent at column 6, lines 53 to 55; the '802 patent, column 6, lines 49 to 50, both of those talking about how important the pressure-sensitive variable-conductance material is to the sensor. The '802 patent, column 2, lines 55 to 59 talks about And the '084 patent, column 8, lines 10 "With the present sensor in all

the present invention.

to 13 again talking about:

embodiments shown and described herein." Now, in light of the Honeywell vs. I.T.T. case, 452 F.3d 1312 and the Andersen Corporation vs. Fiber Composites, 474 F.3d 1361 -- and both of those are Fed Circuit cases -- how do I -- and I'm asking plaintiff this. How do I define the

"P.S.V.C. sensor" without saying it must utilize P.S.V.C. material somehow? In other words, your definition just talks

about "an electricity manipulating device for varying electrical output proportional to varying physical force." But

all of these patents say how important this material is; and, in fact, some of them even say "the present invention." I've

got a 2006 case and a 2007 case from the Fed Circuit with five different Fed Circuit judges plus one visiting judge. How am I

supposed to write this without utilizing -- or saying it utilizes P.S.V.C. material? MR. STEVENSON: The answer there is that there are

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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two embodiments, as we've discussed at length so far today, the surface area embodiment and the changing volume embodiment; and either embodiment can accomplish the invention. Addressing Andersen and Honeywell, both of those cases only involved one embodiment; and in those cases the patent owner was trying to read much more broadly than the only embodiment he disclosed. For instance, in Honeywell, that was a fuel filter case. The invention there was a composite material that

prevented fuel filters from wearing out because of static electricity created in little microscopic holes. And the only

disclosure in the patent was using that for a fuel filter; however, the patentee had, I think, "fuel system component" in his claims and then at infringement time tried to read it much more broadly away from the "fuel filter" and the Federal circuit said: No, that's not appropriate. You had one

embodiment; you only taught how to do it for one embodiment. Likewise, in Andersen, that was a fiber -- excuse me -- a resin case for making resin boards and rails. In that

one the patent said clearly that you require, after extruding this resin, to put it in extrudated pellet form and then basically remelt it; and the patent, in fact, distinguished prior art using that advantage, using that methodology. So, when you compare those two cases, Honeywell and Andersen, which involved one and only one embodiment and some

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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use of that embodiment to overcome prior art, to this case, which involves two embodiments -- increasing surface area effect and variable conductivity due to volume changes -- it's apples and oranges. And what we're saying in this case is,

don't read out one of the two independent mechanisms for accomplishing a sensor that is pressure dependent. THE COURT: But can you show me a single figure in

any of these patents or a single paragraph in any of the specification where the surface area effect is discussed by itself? Now, in each of those -- each of the ones that I saw

and each of the diagrams that I saw, you've got the pressure-sensitive variable-conductance material; and it is quite clear that it is a material that has these little particles embedded into it that will change its internal conductivity as pressure is applied to it. And then they say:

And in addition, you may get more effect from the fact that it spreads out. And that's true. I mean, that's a fact. And he

could also say that it will also be more squished or, you know, all kinds of things might happen to it. I don't see a single

place where you talk about -- or these patents talk about -- at least I haven't found them -- where it just talks about surface effect as though you took a sheet of copper or steel, which I don't think anyone skilled in the art is going to consider as a P.S.V.C. material, and just laid it on a contact grid. MR. STEVENSON: Your Honor, could we go back to our

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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slide, slide 5 -THE COURT: Sure. -- with the figure from the patent?

MR. STEVENSON: THE COURT: your brief.

But keep in mind -- and you did this in

But that bottom area there that you're trying to

tell me -- I mean, it's numbered 36 in most of the figures; and 36, in every single place in the specification, says "the P.S.V.C. material 36." steel. It's not just some sheet of copper or

Now, you can take the numbers away and you can take

away the description and then say, "Oh, I could read this to be something else"; but that's not what the patents say. MR. STEVENSON: Well, you're right. In every

figure -- I agree with the court -- it shows that convex apex as being 36 P.V.C. [SIC] material. THE COURT: P.S.V.C. material, right. P.S.V.C., sorry.

MR. STEVENSON:

But what is important is that it is a separate and different electromechanical effect. matter that -THE COURT: But it always says it also has -- it And the real problem In other words, it doesn't

also has that additional surface effect.

I'm having -- because when I was first looking at it, I was thinking, okay, they've got this. But if that was just a sheet

of copper that someone is pushing down there to get greater contact -- and, actually, copper is probably not the best

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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example -MR. STEVENSON: THE COURT: Right.

-- because once you've got -It's too conductive. But you could I'm not an

MR. STEVENSON: THE COURT:

It's so conductive.

have, I don't know, a semiconductor. engineer.

I'm not sure.

But the idea of just being able to increase surface contact without it being what is known as a P.S.V.C. material, I don't see that embodiment in there; and that's what I'm asking you for is, give me your best shot at where do I look to that to put that in the opinion. MR. STEVENSON: Well, the court has already

highlighted columns 8 and 9, remember; and that's where it is. It's also in this figure. And the reason that it is a separate

embodiment is, in this figure it doesn't matter for the increasing surface area whether or not this flexible conductor is variable according to how much you squish it or not variable because the surface area effect with the circuit traces below and the increasing contact patch is a different electromechanical phenomenon that causes pressure-sensitive sensor to be built. THE COURT: But isn't that -- all right. Here's

what I'm saying -- is, that's a device. the device, and the device changes.

You put pressure on

And the other one is the

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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material. changes.

As you put pressure on the material, the material I don't see, unless you've got what I'll call the

P.S.V.C. material that will change conductivity internally as you put pressure on it in there somewhere in the device, how you can have one of these sensors because, otherwise, all you've got is a sensor that is using a mechanical surface effect and not a pressure-sensitive material. I guess that's

the differentiation I'm making, and that's what you've got to help me on because that's where I am right now in looking at this. MR. STEVENSON: that. Okay. I have a couple responses to

The first is, I think it's sort of common sense

understanding that the fact that this is a flexible conductive material causes the surface area effect regardless of whether it is a variable conductor. icing on the cake? you flip it over? So, you can say: Which is the

Is one the cake and one the icing, or do Just kind of depends on if you view the

glass half-empty or half-full. Secondly, though, we think the law is pretty clear that you shouldn't read out an embodiment of the patent, an alternative embodiment, without very good cause, i.e., clear disavowal of subject matter. Nothing in the prosecution

history, nothing in the spec that disavows that. Third, though, the trump card here that I think -especially for the word "sensor" as opposed to "material," the

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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trump card is claim differentiation.

And I've got a couple

slides on that which I think illustrate the point pretty dramatically. Slide 20, please. First, a quick slide on case law; and I know the court is already familiar with it. But basically when you've

got a dependent claim that adds a limitation to an independent claim, the strong presumption is that that limitation isn't present in the independent claim. That's Modine Manufacturing.

There's a host of other cases, and we cited several in our brief. Although you can overcome the presumption, it has got to be clear and persuasive evidence. that applies to patents in this case. Slide 21, please. THE COURT: All right. Which -Now let's see how

MR. STEVENSON: your Honor. THE COURT:

This is the '991 patent,

All right, the '991 patent. And it's claim 23.

MR. STEVENSON: THE COURT:

Okay. And claim 23 is an independent

MR. STEVENSON:

claim so, therefore, by law, must be broader than the dependent claim. And it says it is "a game control comprising a housing,

a plurality of depressible electricity manipulating devices";

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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and then it says1:

"At least one of said electricity

manipulating devices is a pressure-sensitive variable-conductance sensor." That's the independent claim.

Now, our contention is that that covers either a sensor that uses the surface area effect, could cover a sensor that does the volume effect or a sensor that does both simultaneously. If you look to the dependent claim, though, that gives a lot of input as to what the sensor means. The

dependent claim 31 says -- and, remember, the dependent claim has got to be narrower -- that the "sensor includes pressure-sensitive variable-conductance material." The fact that the patent owner said that the "sensor includes pressure-sensitive variable-conductance material" means, by definition, that the independent claim when it says "sensor" is not limited to having pressure-sensitive variable-conductance material. THE COURT: Now, say that again. You're saying

that because there are a number of different claims, that when the patentee says that "the invention is" or "every embodiment of the invention has," that then you can have claims that don't include that? MR. STEVENSON: strongly than that. I'm actually saying it more

The flavor of claim differentiation you've What I'm

articulated is there is just two different words.

saying is, by operation of presumption because it's dependent

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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versus independent claims -- let me explain. An independent claim is always broader, always, than the dependent claim that depends upon it because the dependent claim, under the rules of patents and the canons of patents, must add limitations to the independent claim and, therefore, must make it narrower. So, anything in a dependent

claim is necessarily, if you look to the Venn diagram, a subset of the independent claim. In claim 23 of the '991 patent, we have a "pressure-sensitive variable-conductance sensor." term, and it's called that. That's the

But then in the narrower dependent

claim 31, it says the pressure-sensitive variable-conductance -- that "sensor includes pressure-sensitive variable-conductance material." Well,

therefore, the strong presumption is that the sensor does not necessarily incorporate a limitation or requirement in and of itself in the independent claim that you've got to have pressure-sensitive variable-conductance material; it's optional. And then when we get to the dependent claim, number 31, we further narrow the scope of 23 to say, oh, those sensors in 23, let's narrow them down to where you've got to have the pressure-sensitive variable-conductance material in them. And as Modine tells us, this is a strong

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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presumption in the patent law that can only be overcome by very clear and very persuasive evidence; and we don't have that evidence in this case. point. There is no prosecution history on this

There is no statement in the specification that There is no disavowal of subject

restricts the invention down. matter.

And, therefore, it is clear that "sensor" is a broader

term than "material." THE COURT: response. other. All right. Let me hear defendant's

And be sure you're either at one microphone or the

You can either pull that one over or step to -- I mean,

it's there for your use; and I think if you'll raise it, it will pick up your voice pretty well. MR. JONCUS: Okay. Well, I'm here now; so, I'm

going to just use this one. If you could switch to my slides. I have two responses. There is a legal response

and also a factual response as specific to this example that counsel pointed out. The first is that claim differentiation

is trumped by a clear statement as to what the invention is. Andersen Corp explains that powerful evidence in "the written description...overcome any presumption arising from the doctrine of claim differentiation." An old case, O.I. Corp., says present invention language -- when you say "my present invention is X," that trumps any argument of claim differentiation.

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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And then the last case I have there is the Honeywell case which says: patentee at his word." "The public is entitled to take the

When the patentee says, "My invention

is X," claim differentiation cannot make it any broader. And I would add to that list the Curtiss-Wright case that we cited in our brief, 438 F.3d 1374. It said claim

differentiation "can not broaden claims beyond their correct scope." So, the scope here is what the patentee said in the present invention statements that your Honor has referred to. If we could go to slide -THE COURT: Okay. And I think you said something What is that?

about a factual distinction, also. MR. JONCUS:

A factual distinction is -- counsel Well, claim 31 -- I don't But claim 31 does not depend

pointed to claim 31 and claim 23. have a slide on this, your Honor. solely on claim 33.

Claim 31 depends on claim 30, which

depends on claim 28; and all of those other intermediate claims add limitations. So, claim differentiation does not come into

play when you have multiple limitations added by multiple claims. on 23. 31 depends on 30, which depends on 28, which depends So, 30 -- 31 is not just adding the element It also

"pressure-sensitive variable-conductance material."

has the other additional limitations in claims 30 and 28. And also claim 31, in addition to the P.S.V.

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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material, it also says "includes an ASIC."

So, it itself adds

two limitations, whatever an ASIC is and the pressure-sensitive variable-conductance material. So, claim differentiation doesn't apply in this context that counsel pointed out to you. Moreover, legally,

claim differentiation as a doctrine cannot expand the scope of the patent beyond -- scope of the claim beyond what is described in the spec. law. THE COURT: Let me ask plaintiff. That looks like Do you have Under Phillips that is very, very solid

the strongest argument I've seen so far on that.

any other examples of what you say is claim differentiation? And obviously this is -- in this field of law, there seems to be constantly dueling canons of construction where you have equal and opposite forces at each other and the court has to figure out which set of cases and which rule applies. you have any other -MR. STEVENSON: THE COURT: I do. But do

-- examples?

And I guess the other question I'd have to look at was the -- well, the parties have agreed that like terms are defined the same throughout the patents, which I really appreciated. It makes things a lot easier and makes a lot of

sense since it is the same inventor. I take it that I don't have to get into the idea

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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that, well, in the '991 patent it is a different invention than the words that -- and now are used slightly differently, because he had greater experience, than they were in the '084 and the '802? MR. STEVENSON: term -THE COURT: MR. JONCUS: THE COURT: Does defendant agree with that, also? Yes, your Honor. Okay. That makes it easier. So, go Correct. Correct. The same

ahead and give me some other examples. MR. STEVENSON: Addressing your Honor's point,

before I give the examples -- and I've got slides on them. Interestingly, Andersen versus Fiber Composite on claim differentiation mentions prosecution history. had a terrible prosecution history problem. In there they They used, in the

prosecution history, basically the limitation to be read in about the pellets and extrudate to overcome prior art references. And, as a result, that was held in that case,

combined with what was in the specification, to be enough to overcome the claim differentiation presumption. However, we

don't have a prosecution history issue here; so, there is no presumptively -- evidence to overcome that presumption. But now going on to your question, your Honor, if we could go to our slides, please, and specifically slide 30. This is the '991 patent again, claims 11 and 12. So, we'll

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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sidestep the issue of whether, if you have intermediate dependent claims, it matters. matter. Candidly, your Honor, it doesn't

Whether the claims telescope down in two steps, three

steps, four steps, or five steps, the net result is that the dependent claim is always narrower than the independent claim, regardless of whether there are any intermediate steps. However, just for an example for the court, to further rebut Microsoft's point, I look at -- I ask the court to turn to 11 and 12 of the '991 patent. Claim 11 is a method claim, and the last step of it says "providing variable action intensity of the game imagery at least in part controlled by pressure-sensitive variable conductance of one of said buttons." In the dependent claim 12 -- directly depends off of 11 -- it says, as a narrowing, "providing for said buttons to depress pressure-sensitive variable-conductance material." So, what that tells us is, if you were talking about a button or a sensor that is controlling a game through the pressure-sensitive variable-conductance phenomenon, that it is much broader than just using the pressure-sensitive variable-conductance material. So, this is another example of claim differentiation that overcomes Microsoft's prophesation that you -- the other example I gave telescopes down too many times; although, I don't really think the number of times the

Christina L. Bickham, RMR, CRR 409/654-2891
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dependents telescope down matters anyway. THE COURT: All right. Any other examples in I mean, I'm

either the claim language or specification? telling you.

Give me your best argument now because you can

obviously tell from my questions, you know, the concern I have on this particular issue. MR. STEVENSON: THE COURT: your best shot on it. MR. STEVENSON: arguments, then. THE COURT: Well, I want right now, I think, more I will. I've got a couple more All right.

So, this is your opportunity to give me

example on this -- show me -MR. STEVENSON: Okay. Another example I can give I

the court is, on the '991 patent, if you look at claim 29. don't have a slide on this one -THE COURT: Okay. -- because I didn't think the

MR. STEVENSON:

telescoping argument would come up. Claim 29 -- you recall we looked at claim 23; and claim 23, the independent claim that we looked at a little while ago, discusses pressure-sensitive variable-conductance sensors, one of the elements. Claim 29 depends directly from And it says, at the

claim 23, again no telescoping problem. bottom:

"and said sensors include pressure-sensitive

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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variable-conductance material."

Of course, if the court

requires the sensor to include pressure-sensitive variable-conductance material, that part is redundant; and, again, claim differentiation would apply there, as well. Those are the examples I've been able to pick up. And I would say to the court that I think that not the quantity of the examples but at least the quality of the examples is paramount and dispositive because, again, we're trying to figure out what the inventor intended by the words and what a person of ordinary skill in the art would take away from the words. I think a person of ordinary skill in the art looking

at this would come to the clear conclusion that "sensor" is a broader term than "material." THE COURT: patents? MR. STEVENSON: them. The concept is applicable across Does this come up in any of the other

I don't have a claim differentiation example from the

other patents; but, of course -THE COURT: All right. What about --

MR. STEVENSON:

-- because they are all a part of

the family, they should be construed consistently. THE COURT: All right. Aside from claim

differentiation, are there any other embodiments or examples -and, like I say, I think I've gone through the figures very carefully; and I've tried to go through the specification

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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carefully.

Every place I've seen it described seems to talk

about the surface effect as an additional add-on when you're using the material that for right now I'm calling the P.S.V.C. material but, just to be clear, the material that has the conductive particles embedded in it and, thus, changes internal conductivity under pressure. If you can point me to some

diagram or some part of the specification where that's not correct, I'd like to see it. MR. STEVENSON: The answer -- and to answer one

more of your questions, claim 44, the independent claim, and claim 50 of the '991 -THE COURT: '991. -- similarly have the claim "A game controller

MR. STEVENSON: differentiation issue.

Claim 50 says:

according to claim 49" -- which, in turn, depends on 47 which in turn, 46 and then goes all the way back to 44. that the "conductive material is pressure-sensitive variable-conductance material." So, we have a conductive material -- and if the court has this claim in front of it, I don't have a slide. THE COURT: I have it. I apologize. But it says

MR. STEVENSON:

If you look at claim 48 and sort of walk through it, 48 discusses: "A game control according to claim 47

wherein the conductive material is located to contact circuit

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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traces."

Okay?

That's the surface area effect embodiment.

49 further narrows 48 and -- excuse me -- further narrows 47 and says the circuit traces are interdigitated. That's the example we saw of the interlocking fingers. And then 50 importantly we get to, where it says: "A game control according to claim 49 wherein said conductive material is pressure-sensitive variable-conductance material." So, your Honor your question is, do the patents in the claims or in the specification or anywhere say that the conductive material used can optionally be nonpressure-sensitive variable-conductance material. says it. Well, 50

Because, again, under claim differentiation if the

only change being made is 50 and 50 is saying for the conductive material -- saying it is pressure-sensitive variable-conductance material, that means when it talks about a conductive material, it's not necessarily pressure-sensitive variable. THE COURT: Okay. Further to your question, I think

MR. STEVENSON:

again looking at the specification as one of ordinary skill in the art would, one of ordinary skill is going to recognize that the surface area effect and the volume compressibility effect are basically different electromechanical effects. THE COURT: Well, I understand that they are

different; but, I mean, I'm just saying that in reading the way

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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it is written in the specification -- and you've got your argument here on the claim differentiation, and I'm going to have to look at that very closely. But every single place in

the specification and every diagram that I've seen -- and I guess what I'm asking you is, point me to the one that I missed because I easily could have with this number of patents -- the surface effect is phrased in terms of "and an additional effect is thus-and-so." 36, what's numbered 36 in all those diagrams, item 36, is always the material that is the flexible material with the embedded conductive elements in it such as carbon. And then, yes, obviously as it presses over more of the area, there is going to be a surface effect. But are there any

places in the specification or diagrams that illustrate what you're showing here in claim 50 or -- I'm sorry, not in 50, in the independent claims that you're saying that don't have that material? I mean -MR. STEVENSON: My answer to your question -- which

I've given before and I'll reiterate but I think you understand my position -- is that if you look at the figure and you look at the description about it, even though the material affixed to the bottom of that dome-cap is pressure-sensitive variable, everybody understands that for the surface area embodiment, it doesn't have to be. material. It is just any flexible conductive

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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And, therefore, that combined with what's said in the claims leads you to the conclusion that these are two distinct embodiments. And once you are into two distinct

embodiments, the law is extremely clear that you've got to have a Markman construction that recognizes that either embodiment is within the scope of the claims and you don't have to have both or a mandatory one or it is just limited to one. over again, that's what the case law says. And I think when you combine claim differentiation with a basic -- you know, our own understanding and common sense about how these things work in the diagrams and how they are described in the patent, it doesn't matter that the patentee didn't say, "And, oh, by the way, let me tell everybody what they already know. For the surface area Over and

embodiment, you don't really need to have a variable-conductance material; you just need to have a flexible conducting material." THE COURT: Well, I mean, the flip to that are the

cases that talk about you're supposed to state what you've got and, when it is very clearly stated, that's what you have. mean -MR. STEVENSON: THE COURT: going each way. All right. Let me hear from defendant. Plaintiff That's right. I

-- again, we're back into the canons

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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THE COURT:

Okay.

All right.

I think what we're I'll ask you to be It's -- well,

going to do is take a recess for lunch.

back at -- let's take about an hour and a half. 1:30.

I'll ask you to be back at 1:30, and we'll start in with We'll be in recess until then.

the remaining claims.

[RECESS, 11:53 A.M. TO 1:30 P.M.] [DISCUSSION OFF THE RECORD.] THE COURT: is "flexible material." the -Yes? MR. JONCUS: I think we agreed that there was no Okay. I think the next one we're on to

And I guess defendant wants it to be

construction necessary for that, your Honor, in -THE COURT: MR. JONCUS: Oh, okay. -- the Second Revised Joint Claim

Construction Statement that was filed on July 31st, that and also -- so, that would be group 5. Group 6, group 7, and group 11, we don't need to argue about anymore. THE COURT: MR. JONCUS: THE COURT: makes it much easier. All those hours I spent on that. I'm sorry. No. That's no problem. That actually Okay.

I'm getting pretty tired today, too.

So, just to be very clear on this, then, no construction is needed on the claim term "flexible material."

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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Is that right from plaintiff? MR. McLEROY: THE COURT: MR. JONCUS: THE COURT: it says: That's right. And defendant? Correct. And then, six, you said the one where

"said surface with an apex is flexible, deforming

with additional physical pressure to flatten and cause additional surface area of contact to provide changes in electrical conductivity in said sensor," no construction necessary on that one? MR. JONCUS: THE COURT: Correct. All right. You're handling all of my

questions really quick because that's one of the questions I was going to ask, is why we were -All right. MR. JONCUS: THE COURT: Seven? "Sheet," no issue with that. No issue on "sheet."

And then what's the next one that was agreed? MR. JONCUS: THE COURT: Eleven, which was "snap-through." Okay, "snap-through."

So, then we're down to group 8, which is the means-plus-function? MR. JONCUS: THE COURT: Correct. Okay. Well, good. Well, you got to

just about where I was thinking we ought to be anyway on those

Christina L. Bickham, RMR, CRR 409/654-2891
lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

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and as I had mentioned before -- and I still don't have any good idea or word on my trial schedule other than it is -- for some reason, everyone has suddenly decided that September and October is a good time to go to trial. I'll probably be in

contact with you if we're going to need to move that date or shift it around a little bit on that second one. trying to give you a "heads up." I'm just

but I'm not getting any -- Judge Parker might know how to force these people to settle, but it looks like I'm going to get a lot of people going to trial in the next two months. But with that, I again appreciate very much your

being here and you are excused and we are in recess. [PROCEEDINGS CONCLUDED, 2:29 P.M.]

COURT REPORTER'S CERTIFICATION

2007, THE FOREGOING IS A CORRECT TRANSCRIPT FROM THE RECORD OF PROCEEDINGS.

lectronically signed by Christina Bickham (401-027-374-9647) for Nintendo lectronically signed by Christina Bickham (401-027-374-9647) for Microsoft lectronically signed by Christina Bickham (401-027-374-9647) for Anascape, Ltd.

t ip cr ns d y. ra gne log E E-T si no AT ied ally ech IC tif nic al t PL r U l ce ctro Leg D na ele eal D gi R T E r i as IN e o w ing e PR Th fil us

I will try not to do that,

I HEREBY CERTIFY THAT ON THIS DATE, AUGUST 31,

Christina L. Bickham, RMR, CRR 409/654-2891

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