Defendants object to the constructions of the following claim terms and phrases. The Order's finding that the claim phrase "such that the light will pass through a liquid crystal display" does not limit the claims is contrary to law for at least two reasons. A "whereby" clause "cannot be ignored" where, as here, it "states a condition material to patentability"
Defendants object to the constructions of the following claim terms and phrases. The Order's finding that the claim phrase "such that the light will pass through a liquid crystal display" does not limit the claims is contrary to law for at least two reasons. A "whereby" clause "cannot be ignored" where, as here, it "states a condition material to patentability"
Defendants object to the constructions of the following claim terms and phrases. The Order's finding that the claim phrase "such that the light will pass through a liquid crystal display" does not limit the claims is contrary to law for at least two reasons. A "whereby" clause "cannot be ignored" where, as here, it "states a condition material to patentability"
INNOVATIVE DISPLAY TECHNOLOGIES LLC, Plaintiff, Civil Action No. 2:13-cv-522-JRG (CONSOLIDATED - Lead Case) v. ACER INC., et al. Defendants. JURY TRIAL DEMANDED
DEFENDANTS OBJECTIONS TO THE AUGUST 26, 2014 CLAIM CONSTRUCTION MEMORANDUM AND ORDER
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Pursuant to 28 U.S.C. 636(b)(1)(A), Fed. R. Civ. P. 72(a), and L.R. CV-72(b), Defendants 1 hereby object to the constructions of the following claim terms and phrases in the August 26, 2014 Claim Construction Memorandum and Order (Dkt. 101) (the Order) because they are clearly erroneous and contrary to law for the reasons discussed below, as set forth in Defendants briefing (Dkt. 75) (Def. Br.), and at the July 30, 2014 hearing (Dkt. 108). Defendants respectfully request that the Court: sustain Defendants objections; find terms 1 through 3 to be indefinite; and adopt Defendants proposed constructions of terms 4 through 8. 1. Term 1: pass through a liquid crystal display with low loss The Orders finding that the claim phrase such that the light will pass through a liquid crystal display with low loss does not limit the claims is contrary to law for at least two reasons. 2 First, the phrase is not analogous to a whereby clause that can be ignored. A whereby clause cannot be ignored where, as here, it states a condition material to patentability. Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005). Here, the low loss phrase is material to patentability because, for example, it requires the deformities to cause light to pass through the LCDa structure not otherwise recited in the claimswith low loss, not some other type of loss, such as moderate or high loss. See, e.g., Def. Br., Ex. F (370 Patent), claim 1. Moreover, this limitation was added in a claim amendment to put the claims in condition for allowance making it plainly material to patentability. See Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d 1235, 1240-41 (Fed. Cir. 2003) (dependent claims rewritten in independent form in response to an examiner objection has a substantial effect on patentability). Thus, it was
1 Hewlett-Packard Company, Huawei Investment and Holding Co., Ltd., Huawei Technologies Co., Ltd., Huawei Device USA Inc., BlackBerry Ltd., BlackBerry Corporation, and Microsoft Corporation (collectively, Defendants) join these objections. Because Dell Inc. consented to trial by a magistrate judge in this case, Dell is uncertain as to whether it will be permitted to file objections to Magistrate Judge Paynes claim construction ruling or whether Dells rights are preserved already. To the extent that it is procedurally proper for Dell to join these objections, Dell affirmatively joins them. 2 No party contended that the low loss claim phrases are not limiting, and this issue was not briefed or argued. Case 2:13-cv-00522-JRG Document 117 Filed 09/09/14 Page 2 of 11 PageID #: 2634
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contrary to law for the Order to ignore the low loss limitation by analogizing the such that to whereby clauses and conclude them to be immaterial to patentability. Second, patent claim terms must be construed to give every word meaning, rendering no words superfluous. See Bicon, Inc. v. Staumann Co., 441 F.3d 945, 950-51 (Fed. Cir. 2006) ([C]laims are interpreted with an eye toward giving effect to all terms in the claim.). The term low loss is not mere surplusage. See Order at 53-54. For example, the term low loss originally appeared only in dependent claims in the prosecution history of the 370 Patent. Order at 52. These dependent claims were objected to during prosecution as depending from a rejected claim, but the examiner stated that they would be allowable if rewritten in independent form with all the limitations from the base claim. See Def. Br., Ex. J, at IDT0000767. The patentee amended the independent claims to add limitations from the dependent claimsincluding the low loss limitation. See id. at IDT0000747-761. Thus, contrary to the Order, low loss clearly limits the claims and should not have been ignored by the Court as a limitation in the claims. See Par Pharms., Inc. v. TWI Pharms., Inc., Civ. No. CCB-11-2466, 2013 WL 3777028, at *5 (D. Md. July 17, 2013) (construing a wherein clause as a substantive limitation where the PTO rejected the claim until the clause was included in the claim). Moreover, for the reasons detailed in Defendants Brief and at the hearing, the low loss terms are indefinite. See Def. Br. at 31-33. Low loss is a term of degree, and the patents specification must therefore provide some standard for measuring that degree. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005); see also Endo Pharms. Inc. v. Watson Labs., Inc., 2014 U.S. Dist. LEXIS 84804, at *24 (E.D. Tex. June 23, 2014) (Gilstrap, J.) (Words of degree can be problematic where they require a subjective inquiry. For that reason the Federal Circuit has required that a patent containing claims requiring such a subjective inquiry provide an objective anchor that identifies the bounds of the claim.). Because the Case 2:13-cv-00522-JRG Document 117 Filed 09/09/14 Page 3 of 11 PageID #: 2635
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specification has no objective anchor for low loss, the term is indefinite. Id.; see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014); Def. Br. at 31-33. 2. Term 2: to [suit/fit] a particular application The claim term to [suit/fit] a particular application is indefinite and therefore invalid because it fails to provide reasonable certainty as to the scope of the invention. Nautilus, 134 S. Ct. at 2124. Without any standard in the specification, the infringement analysis would depend impermissibly on the subjective mindset of the accused infringer to determine whether the accused product suit[s] or fit[s] the application. See Datamize, 417 F.3d at 1350 (The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention.); see also Def. Br. at 28-30. The Order did not address the inherent subjectivity problem, instead stating that the claims require that the recited apparatus must be tailored for an application, regardless of what that application may be. Order at 56 (emphasis added). This subjective language underscores the indefiniteness of the claims. 3. Term 3: well defined The Order erred in not finding the term of degree well defined indefinite because the specification does not provide reasonable certainty as to what a well defined deformity is. Nautilus, 134 S. Ct. at 2129; Datamize, 417 F.3d at 1351. The specification text cited in the Order discusses deformities, not well defined deformities. Order at 46. The Orders construction compounds the ambiguity because distinct is as ambiguous as well defined. This construction is incorrect and will not help the jury draw the line between well defined and not well defined. MediaTek, Inc. v. Sanyo Electric Co., 513 F. Supp. 2d 778, 791 (E.D. Tex. 2007) (rejecting ambiguous proposed construction). 4. Term 4: continuous side walls The Order erred in rejecting Defendants construction of continuous side walls and Case 2:13-cv-00522-JRG Document 117 Filed 09/09/14 Page 4 of 11 PageID #: 2636
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applied the wrong legal standard by requiring that the intrinsic and extrinsic evidence demand[] an uninterrupted limitation. Order at 16. In light of the intrinsic and extrinsic evidence, a person of ordinary skill would understand continuous side walls to mean a wall without interruptions. The specification describes side walls that prevent light from escaping, which requires them to be uninterrupted. Def. Br. at 5-8; Ex. C at 1:41-47, Fig. 6, Ex. H, at JD0002580. The patent cannot now extend to cover such interruptions after they were excluded by the amendment. Saffran v. Johnson & Johnson, 712 F.3d 549, 558-59 (Fed. Cir. 2013). 5. Term 5: at least some of the light extracting deformities on or in one of the sides are of a different type than the light extracting deformities on or in the other side of the panel member The Order erred by construing this term to have its plain meaning where deformities are of different type. In Schriber-Schroth Co. v. Cleveland Trust Co., the U.S. Supreme Court held that deleting a phrase from a claim during prosecution relinquishes claim scope. 311 U.S. 211, 220-21 (1940) (the claims allowed cannot by construction be read to cover what was thus eliminated from the patent). The Order clearly erred by giving short shrift to Schriber-Schroth, and disregarded clear disavowal of claim scope that would encompass shape because type is not synonymous with the term shape. Order at 25. See Def. Br., Ex. J at IDT0000748. 6. Term 6: the air gap terms The Order erred to the extent a plain meaning construction of air gap allows Plaintiff to argue that the structures disclosed in the Hou reference are the claimed air gap. Applicant obtained the 547 patent only after distinguishing Hou on the ground that it did not disclose the claimed air gap. Def. Br., Ex. K at IDT0000044. Hous reflecting means 18 includes an optional adhesion-promoting layer 26 that touches wave guide 16. Id. at Ex. L, 4:17-19, Fig. 3 (depicting this embodiment). Because the adhesion-promoting layer is optional, Hou teaches that it need not be present. In distinguishing Hou, applicant necessarily distinguished all of its Case 2:13-cv-00522-JRG Document 117 Filed 09/09/14 Page 5 of 11 PageID #: 2637
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embodiments. See, e.g., Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). Plaintiff seeks to read the air gap terms onto structures that are like the second Hou embodiment. Def. Br. at 15-16. Such a reading is contrary to law. Southwall, 54 F.3d at 1576; Omega Engg Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003). 7. Term 7: desired The Order erred by adopting a plain meaning construction for desired to the extent it disregards precedent that the term desired requires foreknowledge and even intent on the part of the person practicing the invention. Datamize, 417 F.3d at 1356; cf. Order at 38. The specification makes clear that a desired light output is a specific pre-identified light output. See Def. Br. at 16-18, Ex. A, at 3:6-7, 1:49-51, 6:12-14, and 7:23-24. Any construction that ignores intent, or would allow IDT to conflate desired light output with a merely desirable one, is incorrect and results in an indefinite claim. Datamize, 417 F.3d at 1356. 8. Term 8: predetermined The Order erred by construing predetermined as fixed, a definition Plaintiff advocated for the first time at the hearing. Hrg. Tr. at 80, 85. The Federal Circuit has construed predetermined to mean chosen in advance. 3 Predetermined cannot mean fixed here because pre- means in advance of or beforehand, a meaning not conveyed by fixed.: See Def. Br. at 18-19. The Order further erred by basing its analysis on whether the construction poses a hurdle to Plaintiffs infringement proofs. Order at 42. This approach is contrary to law. Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1327 (Fed. Cir. 2006).
3 IGT v. Bally Gaming Intl, Inc., 659 F.3d 1109, 1118 (Fed. Cir. 2011) (construing predetermined event as the occurrence of one or more conditions chosen in advance); see also Ferguson Beauregard v. Mega Sys., LLC, 350 F.3d 1327, 1340 (Fed. Cir. 2003) (construing predetermined as to determine beforehand). This court has adopted similar constructions. GeoTag, Inc. v. Starbucks Corp., 2013 WL 6000038 (E.D. Tex. 2013) (Payne, J.) (construing predetermined to mean decided or established in advance.); Canrig Drilling Tech., Ltd. v. Omron Oilfield and Marine Inc., 2011 WL 623590 at *5 (E.D. Tex 2011) (Davis, J.) (predetermined angle means an angle having a size that is determined prior to any movement of the drill string through that angle). Case 2:13-cv-00522-JRG Document 117 Filed 09/09/14 Page 6 of 11 PageID #: 2638
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Dated: September 9, 2014
Respectfully submitted,
By: /s/ Sean N. Hsu Timothy C. Bickham tbickham@steptoe.com (pro hac vice) Scott M. Richey srichey@steptoe.com (pro hac vice) STEPTOE & JOHNSON LLP 1330 Connecticut Avenue, NW Washington DC 20036 (202) 429-5517 (202) 429-3902 (fax)
Jeffrey J. Cox jcox@hdbdlaw.com State Bar No. 04947530 Sean N. Hsu shsu@hdbdlaw.com State Bar No. 24056952 HARTLINE DACUS BARGER DREYER LLP 6688 North Central Expressway, Suite 1000 Dallas, Texas 75206 (214) 369-2100 (214) 369-2118 (fax)
ATTORNEYS FOR DEFENDANTS HUAWEI DEVICE USA INC., HUAWEI TECHNOLOGIES CO., LTD., AND HUAWEI INVESTMENT AND HOLDING CO. LTD.
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By: /s/ Richard A. Cederoth Harry L. Gillam, Jr. Texas State Bar No. 07921800 GILLAM & SMITH, L.L.P. 303 South Washington Avenue Marshall, Texas 75670 Telephone: (903) 934-8450 Facsimile: (903) 934-9257 gil@gillamsmithlaw.com David T. Pritikin dpritikin@sidley.com Richard A. Cederoth rcederoth@sidley.com Douglas I. Lewis dilewis@sidley.com Ellen S. Robbins erobbins@sidley.com SIDLEY AUSTIN LLP One South Dearborn Chicago, Illinois 60603 Telephone: 312-853-7000 Facsimile: 312-853-7036 Nabeel U. Khan Texas State Bar No. 24074530 nkhan@sidley.com SIDLEY AUSTIN LLP 2001 Ross Avenue, Suite 3600 Dallas, Texas 75201 Telephone: 214-981-3300 Facsimile: 214-981-3400 ATTORNEYS FOR DEFENDANT MICROSOFT CORPORATION
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By: /s/ Susan Baker Manning E. Leon Carter (Texas Bar No. 03914300) lcarter@carterscholer.com John S. Torkelson (Texas Bar No. 00795154) jtorkelson@carterscholer.com Joshua Bennett (Texas Bar No. 24059444) jbennett@carterscholer.com CARTER SCHOLER ARNETT HAMADA & MOCKLER, PLLC 8150 N. Central Expressway, Fifth Floor Dallas, Texas 75206 Telephone: 214.550.8188 Facsimile: 214.550.8185
James J. Elacqua james.elacqua@skadden.com SKADDEN, ARPS, SLATE MEAGHER & FLOM LLP 525 University Avenue Palo Alto, California 94301 Telephone: 650.470.4500 Facsimile: 650.470.4570
Susan Baker Manning (pro hac vice) susan.manning@bingham.com John A. Polito (admitted to E.D. Tex.) john.polito@bingham.com Monica A. Hernandez (pro hac vice) monica.hernandez@bingham.com BINGHAM McCUTCHEN LLP 2020 K Street, NW Washington, D.C. 20006-1806, U.S.A. Telephone: 202.373.6000 Facsimile: 202.373.6001
ATTORNEYS FOR DEFENDANTS BLACKBERRY LIMITED AND BLACKBERRY CORPORATION
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By: /s/ Peter J. Chassman Peter J. Chassman Texas Bar No. 00787233 Email: pchassman@winston.com Phillip D. Price Texas Bar No. 24060442 Email: pprice@winston.com Winston & Strawn LLP 1111 Louisiana, 25th Floor Houston, Texas 77002 Telephone: (713) 651-2600 Facsimile: (713) 651-2700
Kimball R. Anderson Illinois Bar No. 00049980 Email: kanderson@winston.com Winston & Strawn LLP 35 W. Wacker Drive Chicago, Illinois 60601-9703 Telephone: (312) 558-5858 Facsimile: (312) 558-5700
Deron R. Dacus Texas State Bar No. 00790553 Email: ddacus@dacusfirm.com The Dacus Firm, P.C. 821 ESE Loop 323, Suite 430 Tyler, Texas 75701 Telephone: (903) 705-1117 Facsimile: (903) 705-1117
COUNSEL FOR DEFENDANT, DELL INC.
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By: /s/ Peter J. Wied Harry L. Gillam, Jr. Texas State Bar No. 07921800 GILLAM & SMITH, L.L.P. 303 South Washington Avenue Marshall, Texas 75670 Telephone: (903) 934-8450 Facsimile: (903) 934-9257 gil@gillamsmithlaw.com
Terry D. Garnett tgarnett@goodwinprocter.com Peter J. Wied pwied@goodwinprocter.com GOODWIN PROCTER LLP 601 S Figueroa Street 41 st Floor Los Angeles, California 90017 Tel: 213.426.2500 Fax: 213.623.1673
ATTORNEYS FOR DEFENDANT HEWLETT-PACKARD COMPANY
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