Anascape, Ltd v. Microsoft Corp. et al

Filing 205

Joint MOTION for Partial Summary Judgment of Invalidity of Claims 19-20, 22-23 of the '700 Patent by Microsoft Corp..Responses due by 3/10/2008 (Attachments: # 1 Text of Proposed Order Granting Defendants' Joint Motion for Partial Summary Judgment of Invalidity of Claims 19-20, 22-23, of the '700 patent# 2 Affidavit of Stephen Bristow# 3 Affidavit of Ashley Fogerty# 4 Appendix Vol. 1 of 4# 5 Appendix Vol. 2 of 4# 6 Appendix Vol. 3 of 4# 7 Appendix Vol. 4 of 4)(Vandenberg, John)

Anascape, Ltd v. Microsoft Corp. et al

Doc. 205 Att. 7

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS LUFKIN DIVISION ANASCAPE, LTD. Plaintiff, v. MICROSOFT CORPORATION, and NINTENDO OF AMERICA, INC., Defendants. § § § § § § § § § §

Hon. Ron Clark Civil Action No. 9:06-CV-00158-RC

Oral Argument Requested

DEFENDANTS' JOINT MOTION FOR PARTIAL SUMMARY JUDGMENT OF INVALIDITY OF CLAIMS 19-20, 22-23 OF THE `700 PATENT

APPENDIX ­ VOLUME 4 OF 4

A232-A236

A237 A238

Excerpted slides used as exhibits in the Expert Witness Report of Steven Bristow, dated February 11, 2008. Excepted page from the Title 37 of the Code of Federal Regulations: Patents, Trademarks, and Copyrights, dated July 1, 2001. Excerpt from US Patent and Trademark Office's Manual of Patent Examining Procedure (MPEP).

Dockets.Justia.com

`700 Claim 20: Dual Shock

A

sensors

sensors

connecting sheet

126

ppendix to Defendants' Joint MSJ, 9:06-CV-00158-RC

Page A232

`700 Claim 22
Anticipated by:
Himoto

Obvious in view of:
Dual Shock Saturn 3D

+
Dual Shock 2
Dual Shock Kramer

+
Dual Shock Furukawa

+
Cyberman Armstrong Kramer

+
Cyberman Armstrong

+
Furukawa

+

+

132

Appendix to Defendants' Joint MSJ, 9:06-CV-00158-RC

Page A233

`700 Claim 22: Dual Shock 2 A

proportional button sensors

134

ppendix to Defendants' Joint MSJ, 9:06-CV-00158-RC

Page A234

`700 Claim 23
Anticipated by:
Dual Shock 2

Obvious in view of:
Himoto

Dual Shock

Saturn 3D

+
Cyberman Armstrong Kramer

+
Cyberman Armstrong

+
Furukawa

+

+

140

Appendix to Defendants' Joint MSJ, 9:06-CV-00158-RC

Page A235

`700 Claim 23: Dual Shock 2

r

otary potentiometers

141

Appendix to Defendants' Joint MSJ, 9:06-CV-00158-RC

Page A236

Appendix to Defendants' Joint MSJ, 9:06-CV-00158-RC Page A237

United States Patent and Trademark Office
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Patents > Search Colections > MPEP > 2114 Apparatus and Article Claims - Functional Language [R-1] - 2100 Patentability

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2114 Apparatus and Article Claims - Functional Language [R-1] - 2100 Patentability
2114 Apparatus and Article Claims - Functional Language [R-1]
For a discussion of case law which provides guidance in interpreting the functional portion of meansplus-function limitations see MPEP § 2181 - § 2186.
APPARATUS CLAIMS MUST BE STRUCTUR-ALLY DISTINGUISHABLE FROM THE PRIOR ART

>While features of an apparatus may be recited either structurally or functionally, claims< directed to >an< apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART

A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material". The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM

Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any structural difference. It should be noted, however, that means plus function limitations are met by structures which are equivalent to the corresponding structures recited in the specification. In re Ruskin, 347 F.2d 843, 146 USPQ 211 (CCPA 1965) as implicitly modified by In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994). See also In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three fastening elements. The reference disclosed two fastening elements that could perform the same function as the three fastening elements in the claims. The court construed the claims to require three separate elements and held that the reference did not disclose a separate third fastening element, either expressly or inherently.). Appendix to Defendants' Joint MSJ, 9:06-CV-00158-RC A238