Free Reply Memorandum - District Court of California - California

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KARL J. KRAMER (CA SBN 136433) ELLEN S. REINSTEIN (CA SBN 227833) ERIKA L. LABIT (CA SBN 234919) MORRISON & FOERSTER LLP 755 Page Mill Road Palo Alto, California 94304-1018 Telephone: (650) 813-5600 Facsimile: (650) 494-0792 [email protected] Attorneys for Defendant SYNAPTICS, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

ELANTECH DEVICES CORPORATION, a corporation existing under the laws of Taiwan, R.O.C., Plaintiff, v. SYNAPTICS, INC., a Delaware corporation; AVERATEC, INC., a California corporation; and PROSTAR COMPUTER, INC., a California corporation, Defendants. AND RELATED COUNTERCLAIMS

Case No.

C06-01839 CRB

SYNAPTICS, INC.'S REPLY CLAIM CONSTRUCTION BRIEF CONCERNING THE SYNAPTICS PATENTS

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

TABLE OF CONTENTS Page SUMMARY OF CLAIM CONSTRUCTION ARGUMENT ............................................ 1 LEGAL STANDARDS FOR CLAIM CONSTRUCTION ................................................ 1 CONSTRUCTION OF THE ASSERTED SYNAPTICS PATENT CLAIMS .................. 3 A. "Incrementally Move" Does Not Mean "Equations 12 And 13"............................ 3 B. The Signaling Steps Are Not Limited By The Illustrations In The Patents............ 6 1. "Signal" Is Not Limited To One Type Of Signal........................................ 6 2. Elantech Does Not Defend Its Definition Of "Maintaining" ...................... 9 C. The "Corner Tap" Claim Steps Do Not Require A Specific Order ...................... 10 D. "Data Packet Processor" Is Not Limited To "Software" ...................................... 12 CONCLUSION ................................................................................................................. 15

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TABLE OF AUTHORITIES Page Agfa Corp. v. Creo Prods., Inc., 451 F.3d 1366 (Fed. Cir. 2006)................................................................................................. 13 Altiris v. Symantec Corp., 318 F.3d 1363 (Fed. Cir. 2003)............................................................................................. 1, 11 Bell Atl. Network Serv., Inc. v. Covad Comm'ns Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001)................................................................................................. 14 Combined Sys. v. Def. Tech. Corp. of Am. and Fed. Labs., 350 F.3d 1207 (Fed. Cir. 2003)................................................................................................. 11 Conoco, Inc. v. Energy & Envtl. Int'l, 460 F.3d 1349 (Fed. Cir. 2006)................................................................................................... 2 Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335 (Fed. Cir. 1998)................................................................................................. 14 Eolas Tech. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005)................................................................................................. 14 Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, No. 03-1431 SBA, 2006 U.S. Dist. LEXIS 36788 (N.D. Cal. May 25, 2006) ....................... 2, 5 Gemstar-TV Guide Int'l, Inc. v. ITC, 383 F.3d 1352 (Fed. Cir. 2004)................................................................................................... 5 Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352 (Fed. Cir. 2004)................................................................................................... 6 Interactive Gift Express, Inc. v. Compuserve, Inc. et. al., 256 F.3d 1323 (Fed. Cir. 2001)........................................................................................... 10, 11 Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371 (Fed. Cir. 2001)................................................................................................. 14 Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005)............................................................................................... 3, 5 Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004)................................................................................................... 13 Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d 1545 (Fed. Cir. 1996)................................................................................................... 14 Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261 (Fed. Cir. 1999)................................................................................................. 14 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................................... 2, 13 SanDisk Corp v. Memorex Prods., Inc., 415 F.3d 1278 (Fed. Cir. 2005)................................................................................................... 5
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TABLE OF AUTHORITIES (continued) Page Teleflex v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002)................................................................................................. 13 Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270 (Fed. Cir. 1995)............................................................................................... 6, 13 Varco, L.P. v. Pason Sys. USA Corp., 436 F.3d 1368 (Fed. Cir. 2006)................................................................................................... 5 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)................................................................................................... 11 Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999)................................................................................................. 14

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I.

SUMMARY OF CLAIM CONSTRUCTION ARGUMENT In response to the Court's February 14, 2007 Order, Elantech Devices Corporation

("Elantech") chose Joint Claim Terms 9, 10, 11, and 13 as the terms it most wants the Court to construe. These Joint Claim Terms relate to only two of the four patents ­ the '411 and '931 Patents ­ that Synaptics, Inc. ("Synaptics") is asserting in this action. Synaptics will primarily address Elantech's arguments pertaining to these terms.1 Elantech openly argues that the disputed claim terms should be narrowly limited to the preferred embodiments disclosed in the patent, or even narrower. Contrary to Elantech's arguments, simple terms such as "incrementally move" and "signal" should not be limited to very specific types of increments or signals. Elantech cites nothing from the patent specifications or prosecution histories to support such narrow readings of broad, general terms. Moreover, Elantech's argument that the steps of the "corner tap" claims (Appendix A, Joint Claim Term 11) should be limited to a particular order, ignores the literal language of the claims and the primary case that Synaptics cited, Altiris v. Symantec Corp., 318 F.3d 1363, 1370 (Fed. Cir. 2003). As the preferred embodiment indisputably shows, and the claims plainly suggest, no such order is required in Joint Claim Term 11. II. LEGAL STANDARDS FOR CLAIM CONSTRUCTION Elantech falsely conflates two distinct sentences from Synaptics' brief to argue that Synaptics incorrectly asserts that "claim construction `begins and ends' with the `ordinary and customary meaning' of the claim terms alone." (Elantech Devices Corp.'s Opposition Claim Construction Brief Re: Synaptics' `052, `411, `591, and `931 Patents ("Elantech Opp. Brief"), at 1:4-6.) Instead, at pages 1-2 of the Opening Brief, Synaptics set forth a standard litany of the law on claim construction that Elantech simply ignores: (1) the claim construction inquiry begins and ends with the actual words in the claims; (2) claim terms are As set forth in the 3rd Amended Joint Claim Chart (Appendix A hereto), the parties now agree upon the proper construction of Joint Claim Terms 1, 2, and 8, and Elantech has abandoned its argument that Joint Claim Term 5 is indefinite. Because these issues are no longer in dispute, the Court's order should include rulings on these Joint Claim Terms.
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given their ordinary meaning unless the specification specially defines them; (3) courts look to publicly available information to guide the determination of what the ordinary meaning of a claim term is to one of skill in the art; (4) extrinsic evidence, including expert testimony, is helpful when it is consistent with the patent and claims; and (5) the claims should be construed in light of the specification, but the specification examples should not be read into the ordinary words used in the claims. (See Corrected Synaptics Opening Claim Construction Brief ("Opening Brief").) Elantech does not dispute any of these legal maxims. The only substantive issue of law that Elantech raises is that courts should view expert testimony with caution because it might be "biased." (Elantech Opp. Brief at 1:1617.) This generic warning has little weight here because Elantech presents no facts to suggest that Dr. Wolfe's expert explanations are "biased" in the least. Synaptics presented Dr. Wolfe's testimony because the teachings in the patents relate to electrical engineering concepts concerning the design of touchpads -- something with which the Court and the average juror may not have much familiarity. See Conoco, Inc. v. Energy & Envtl. Int'l, 460 F.3d 1349, 1362 (Fed. Cir. 2006) ("extrinsic evidence in the form of expert testimony can be useful to a court for a variety of purposes, such as to provide background on the technology . . .") (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)). Dr. Wolfe explained how one of ordinary skill in the art would understand the teachings in the patent specifications to cover a broad range of design techniques, not only isolated illustrations or embodiments in the patents. Such information can be, and in this case is, important in deciding claim construction. See Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, No. 03-1431 SBA, 2006 U.S. Dist. LEXIS 36788, at *41-42 (N.D. Cal. May 25, 2006). Without the information necessary to appreciate the full teachings in the patent specification from the perspective of one of skill in the art, the Court may not fully appreciate the proper scope of the claims. Although the thrust of Elantech's attack on Dr. Wolfe is short on particulars, the few instances in which Elantech actually takes issue with Dr. Wolfe prove that Elantech's complaints are without merit. (Rebuttal Expert Declaration of Andrew Wolfe Ph.D ("Wolfe
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Rebuttal Decl."), ¶¶ 3-22.) Although it had a full and fair opportunity to do so, Elantech has presented no alternative view from the perspective of one of ordinary skill in the art of touchpad design. Elantech's attorney argument about the views of one of ordinary skill in the art cannot substitute for evidence. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) ("Unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony."). III. CONSTRUCTION OF THE ASSERTED SYNAPTICS PATENT CLAIMS A. "Incrementally Move" Does Not Mean "Equations 12 and 13."

Elantech does not assert that in ordinary usage "incrementally move" means equations 12 and 13 from the '411 Patent. Elantech also does not assert that "incrementally move" is specially defined in the patent specification. Instead, Elantech argues that "incrementally move" should be narrowed to equations 12 and 13 because (1) the claim words require these equations to distinguish "incrementally move" from "first cursor motion signals," and (2) those equations are the only embodiment contemplated by the inventors. Both of these arguments are wrong. First, by ignoring the actual context of the claim terms, Elantech creates a false conflict between the "incrementally move" aspect of the "second cursor motion signal" and the movement associated with the "first cursor motion signals." A careful reading of the actual claim language disproves Elantech's argument. Claim 46 recites a method for using a finger or other object on a touchpad to move a cursor on the display screen. As noted in Synaptics' Opening Brief, a touchpad may be smaller than the screen so that the user's finger may reach the edge of the touchpad before the cursor reaches the desired place on the screen. The method in claim 46 permits the user to leave a finger in the edge region of the touchpad and still continue to move the cursor on the screen. The claim states that in addition to the normal cursor motion signals that are sent when a finger is on the touchpad, when the finger is near an edge of the touchpad, a second cursor motion signal is generated that adds an incremental value in the direction of the

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nearest edge of the touchpad. (Expert Declaration of Andrew Wolfe Ph.D Concerning Claim Construction of Synaptics' Patents, executed January 26, 2007 ("Wolfe Decl."), ¶ 15.) In exact words, claim 46 states that if an object, for example a finger, is moved on the touchpad, "first cursor motion signals" are generated "for causing said cursor to move in a direction on the display screen representing the difference between a previous position of said object and said present position of said object reported by said present-position signals." This means that when the finger moves on the touchpad, first signals for moving a cursor (for example, data representing the change in the X direction ("X"), and change in the Y direction ("Y")), are generated to move the cursor on the display screen. The claim also states that "second cursor motion signals" are generated if the finger is in an "outer region" of the touch pad. The claim requires "said second cursor motion signals for causing said cursor to incrementally move on the display screen a selected distance in a fixed direction relative towards said outer edge of said sensing plane to which said object is proximate." (Emphasis supplied.) This language specifies that "second cursor motion signals" are "for causing said cursor to incrementally move . . . a selected distance" toward the near edge of the touchpad. Claim 46 then states that when the finger is in the "outer region" of the touchpad, the method requires "moving said cursor in accordance with said first cursor motion signals combined with said second cursor motion signals." In light of the literal language of the claim, Elantech's argument has no merit. The plain meaning of "incrementally move" in the claims is that the "second cursor motion signals" are "for causing" the cursor to move in increments "a selected distance" toward the near edge. (Wolfe Decl., ¶ 16 and Exhibit 11.) Despite Elantech's alleged confusion (Elantech Opp. Brief at 2:9-10), that is "how moving `in increments' differs from simply moving" with normal "first cursor motion signals." There is no conflict in the claims between these types of "moving." The claim phrase "incrementally move . . . a selected distance in a fixed direction," cannot reasonably be narrowed to mean "movement defined by the second component of Equations 12 and 13 in the '411 patent, namely, S(Xcur ­Xcenter) and S(Ycur - Ycenter)." (See Elantech's definition in Appendix A attached hereto, Claim Term 13.)
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Second, no evidence from the patent supports Elantech's improper attempt to narrow the claims to one set of equations described in the '411 Patent specification. Varco, L.P. v. Pason Sys. USA Corp., 436 F.3d 1368, 1375 (Fed. Cir. 2006); SanDisk Corp v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005), cert. denied, 126 S. Ct. 829 (2005) (references to a preferred embodiment are not claim limitations). Elantech presents no evidence to rebut Dr. Wolfe's citation to several alternatives described in the '411 Patent specification for adding an increment to the cursor motion signals. (Wolfe Decl., ¶ 17.) These alternative embodiments demonstrate that the inventors did not intend to limit the claims to one embodiment. Gemstar-TV Guide Int'l, Inc. v. ITC, 383 F.3d 1352, 1372 (Fed. Cir. 2004) (an embodiment of a claim term in the written description "does not limit the otherwise broad claim language"); Fresenius Med. Care Holdings, 2006 U.S. Dist. LEXIS 36788, at *95-96 (preferred embodiment cannot be used to limit a claim). In opposition, Elantech offers only improper attorney argument (Invitrogen, 429 F.3d at 1068), which is confused and factually inaccurate. (Wolfe Rebuttal Decl., ¶¶ 4-14.) Moreover, Elantech's response to Synaptics' claim differentiation position (Elantech Opp. Brief at 3-4), ignores claims 30 and 32, which indisputably describe a more detailed embodiment of "incrementally move . . . a selected distance in a fixed direction." Claim 30 recites the step of "generating second X and Y cursor motion signals" if the finger is in the "outer region." As in claim 46, these second cursor motion signals in claim 30 are for "incrementally moving said cursor on the display screen a selected distance." However, claim 30 further explains that the "selected distance" represents for each of X and Y directions the difference between the current position and a "fixed reference point": said second X and Y cursor motion signals incrementally moving said cursor on the display screen a selected distance in X direction representing the difference between an X location of a fixed reference point on said sensing plane and an X component of said present position of said object on said sensing plane and a selected distance in Y direction representing the difference between a Y location of a fixed reference point on said sensing plane and a Y component of said present position of said object on said sensing plane, said second cursor motion signals being generated so long as said object is in said outer region of said sensing plane.

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(Wolfe Decl., Exhibit 2, '411 Patent, Col. 61, lines 18-33.) Dependent claim 32 includes the further limitation that the "fixed reference point is the center of the sensing plane." Thus, claim 32, which incorporates claim 30, recites in text the precise formulation of the example increment set forth in equations 12 and 13 of the '411 Patent: "S(Xcur ­Xcenter)" and "S(Ycur Ycenter)." (Wolfe Rebuttal Decl., ¶ 14.) By contrast, claim 46 contains no such precise limitation to the "selected distance" of the "increment" and, consequently, should not be limited to equations 12 and 13 of the '411 Patent. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277-78 (Fed. Cir. 1995) (limitations from narrow claims cannot be read into broader claims). B. The Signaling Steps Are Not Limited By The Illustrations In The Patents.

Elantech has chosen to focus the Court on Joint Claim Terms 9 and 10. These claim terms include the term "signal" and much of the dispute between the parties centers on Elantech's effort to define the ordinary term "signal" to mean only a certain type of signal. 1. "Signal" Is Not Limited To One Type Of Signal

Joint Claim Terms 9 and 10 (as well as Joint Claim Terms 3-7), require the use of a "signal." Elantech's proposed claim construction does not define "signal" with useful alternative words that are helpful in elucidating the ordinary meaning of "signal" to one of ordinary skill in the art. Instead, Elantech simply restates the word "signal" and adds further words to narrow the normal range of possible meanings for the word "signal." Elantech asserts that "signal" in Joint Claim Term 9 means "a signal that has a low and a high state." This same narrow meaning is carried over into Joint Claim Term 10. (Appendix A.) Elantech is not "interpreting" what "signal" means, but rather, Elantech is blatantly and impermissibly narrowing the word "signal" to a certain type of a "signal." See Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352, 1357 (Fed. Cir. 2004) ("A patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification.") In this case, the claims do not state that the "signal" must be of a particular type. The claims are silent as to the type of "signal" methodology used.
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Elantech's claim construction is premised upon narrowly limiting the term "signal" to the timing diagrams shown in Figure 15 of the '591 and '931 Patents. (Elantech Opp. Brief at 9.) Elantech's lead argument in support of its position is that only "a signal that has a low and a high state" can be "terminated" as recited in the claims. This argument is circular since it is only true if "terminate" is narrowly construed to be the change of a "high" state signal to a "low" state signal. The argument completely ignores that other signaling methodologies plainly have ways of "terminating" a signal.2 The only evidence from one of ordinary skill in the art, Dr. Wolfe, is that each well-known signaling system has a method for "terminating" the signal state, including, for example, sending a data packet signal indicating the termination of the prior signal state. (Wolfe Decl., ¶¶ 34-36, 39.) Contrary to Elantech's new assertions, the patents teach to one of ordinary skill in the art that "signal" is to have a broad ordinary meaning and is not limited to "a signal that has a low and a high state." (Wolfe Rebuttal Decl., ¶¶ 15-20.) First, although Figure 15 is illustrative of the timing relationships between various signals and events in the preferred embodiment, one of ordinary skill in the art would recognize these figures as merely illustrative of the timing of the signaling and not the only means for signaling. (Id., ¶ 17.) Second, contrary to Elantech's unsupported argument, there are numerous express and implicit references in the patent specification to signaling by transmission of packetized data. (Wolfe Decl., ¶¶ 33-36; Wolfe Rebuttal Decl., ¶¶ 18-20.) For example, the patent describes that "the virtual buttons can be inserted into the regular packet stream" (Wolfe Decl., Exhibit 4, '591 Patent, column 37, lines 6-9, and Exhibit 5, '931 Patent, column 43, lines 12-15), recognizing that a gesture signal in the form of a packet stream is an ordinary

Elantech mentions "terminating" in its effort to limit the construction of "signal" (Elantech Opp. Brief at 9), but does not provide any further explanation for its proposal to define "terminating" as "changing the state of the signal from the high signal state to the low signal state." (Appendix A, Joint Claim Term 4.) Elantech's definition is not consistent with the teachings in the patent or the common understanding of those of ordinary skill in the art. (Wolfe Decl., ¶¶ 39, 52, Exhibit 4, '591 Patent, Col. 37, lines 6-9, and Exhibit 5, '931 Patent, Col. 43, lines 12-15.)

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method of communicating from an input device. (Id.) Elantech essentially concedes this point, but argues that there is no disclosure in the patent of a processor for processing such data packets. (Elantech Opp. Brief at 11:5-9.) This new argument fails because it is undisputed that using processors to transmit packets of data as a signaling method predates the patents-in-suit by decades and was well known in the art. (Wolfe Rebuttal Decl., ¶ 18; Wolfe Decl., ¶ 34.) The patents teach to one of ordinary skill in the art that the claimed gestures can be implemented in any variety of signaling methodologies. (Wolfe Rebuttal Decl., ¶¶ 17-20; Wolfe Decl., ¶ 35.) To bolster its narrow definition of "signal," Elantech contends, at page 10, lines 22-24 of its Opposition Brief, that the patent specification distinguishes between sending packetized "signals" representing motion and sending packetized "events" representing gestures, such as "virtual buttons." The patent refers to both as "signals": "Referring back to FIG. 1, according to another aspect of the present invention, gesture unit 20 examines the (X,Y,Z) data produced by arithmetic unit 16 to produce one or more `virtual mouse button' signals to be sent along with the (X, Y) signals to the host." (Wolfe Decl., Exhibit 4, '591 Patent, column 30, lines 33-37, and Exhibit 5, '931 Patent, column 33, lines 31-36 (emphasis supplied).) The patents include packets of "gesture" data, such as "virtual button" information, as a type of "signal." Elantech also never addresses the express teachings in the patents that the inventions can be implemented "as a software program, hardware state machine, or otherwise. All such implementations are intended to fall within the scope of the present invention." (Wolfe Decl., ¶ 35, Exhibit 4, '591 Patent, Col. 35, lines 23-32, and Exhibit 5, '931 Patent, Col. 40, lines 47-57.) It is undisputed that in such embodiments, the "signal" need not be a voltage level on a single wire that has a "high" state and a "low" state. Indeed, "signals" may simply be "flags" or "messages" residing in memory or registers or communicated over I/O channels, for example. (Wolfe Decl., ¶ 35.) Moreover, the patents expressly disclose that the signaling for the inventions may be implemented with packets of data defined by the then well-known computer mouse communication protocols, which are not separate instances of a
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"high" or "low" state. (Id.) Each of these signaling types is contemplated within the broad designation "signal." (Id., ¶¶ 34-35, 51-55, 57, 58.) The claims literally cover all "signals," and nothing in the claims or patent specifications narrows the type of "signal" that the claims cover. 2. Elantech Does Not Defend Its Definition Of "Maintaining"

Elantech's Opposition Brief mentions "maintaining," but nowhere provides any substantive explanation for its definition of "maintaining" as "continuously outputting the high signal state." (Appendix A, Joint Claim Terms 7, 10.) As taught in the patents and as set forth in the unrebutted testimony of Dr. Wolfe, signals are "maintained" in a touchpad system in variety of ways. For example, the patents teach that a signal previously sent may be retained until it is, in effect, rescinded. (Wolfe Decl., ¶ 41, Exhibit 4, '591 Patent, Col. 33, lines 1-3, Col. 37, lines 6-9, and Exhibit 5, '931 Patent, Col. 36, lines 6-8, Col. 43, lines 1215.) The patent also teaches that a signal previously sent will dictate the operation in question while subsequent signals are suppressed. (Id.) Moreover, the standard mouse protocol at the time included all of the concepts of "to continue, retain, or repeat" in maintaining signals relating to gestures. (Id.) These teachings are also perfectly consistent with the wide variety of ways those of skill in the art would have known to "maintain" a signal in the context of touch-pad technology. (Id.) The Court should reject Elantech's effort to narrow the claims beyond their ordinary meaning.3

Elantech still offers no explanation for adding to Joint Claim Term 5 the phrases "for a predetermined period of time," and "which interprets the termination of the first signal and the existence of a second high signal state." Nothing in the claims or the patent specification requires these additional phrases to be added to this particular claim phrase. (Wolfe Decl., ¶¶ 37, 53.) Similarly, Joint Claim Terms 3 and 6 do not involve signals that the "gesture will potentially occur on the touch-sensor pad." (Appendix A, Terms 3 and 6 (emphasis added).) Nothing in the claims or the teachings of the patents requires these words in the recited claim phrase. (Wolfe Decl., ¶¶ 38, 51, 54; Wolfe Rebuttal Decl., ¶¶ 21-22.) Elantech also does not even attempt to defend its contention that "repeatedly sending" requires an unbroken, continuous signal level. (Wolfe Decl., ¶¶ 43, 56 and Exhibit 4, '591 Patent, Col. 39, lines 13-23; Col. 44, lines 23-56.)

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C.

The "Corner Tap" Claim Steps Do Not Require A Specific Order.

The parties dispute whether the steps of claim 5 of the '931 Patent (Appendix A, Joint Claim Term 11) must be performed in the order in which they are recited in the claim. Elantech does not dispute the general rule that "[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one." Interactive Gift Express, Inc. v. Compuserve, Inc. et. al., 256 F.3d 1323, 1342 (Fed. Cir. 2001). The dispute in this case turns on whether the literal words describing the steps require an order of the steps. Claim 5 of the '931 Patent recites "A method for recognizing a tap gesture made on a touch-sensor pad in a touch sensing system providing X and Y position information to a host." The claims make clear that a "tap gesture" is to occur on a touchpad in a "touch sensing system." The two separate steps of the claim in dispute are: detecting the occurrence of a tap gesture made by a tapping object on the touch-sensor pad detecting in which of at least one corner of the touch-sensor pad said tap gesture occurred The first step is "detecting" that a tap gesture has occurred. The first step is not the "tap gesture" itself or the occurrence of the "tap gesture;" rather, it is the action of "detecting" by the "touch sensing system" of a "tap gesture" on the touch pad. The second step is "detecting which of at least one corner of the touch-sensor pad said tap gesture occurred." This is also a "detecting" step. This step does not literally require that the system has already detected contact on the touch-sensor pad as a "tap gesture." In other words, the second step does not require "detecting in which of at least one corner of the touch-sensor pad said detected tap gesture occurred." Rather, the second "detecting" step only requires that the "tap gesture" has actually "occurred" on the touchpad. There is no logical requirement that the system perform one detection step before the other. This interpretation is consistent with the teachings in the patent specification. (Wolfe Decl., ¶ 48.) Elantech does not dispute that Figure 17 describes an algorithm for processing information from the touch-sensor pad that executes the two detection steps concurrently, with many overlapping steps. (Id., ¶ 48 and Exhibit 5, '931 Patent, Col. 40, line 66-Col. 41,
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line 4.) Thus, in the sole embodiment in the '931 Patent, there is no "separate" process and no required order in the algorithm for detecting a tap gesture and detecting the corner in which the tap gesture occurred. (Id.) Elantech does not dispute that its proposed construction impermissibly would exclude the embodiment disclosed in the patent. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (A construction that excludes the preferred embodiment would "rarely, if ever, [be] correct . . . ."). Unlike in the case Elantech cites, each step of claim 5 is not conditioned on the completion of the preceding step by an explicit reference to the completed result as a component of the next step. See Combined Sys. v. Def. Tech. Corp. of Am. and Fed. Labs., 350 F.3d 1207, 1212 (Fed. Cir. 2003). The steps construed in Combined Systems included "forming folds," and then "inserting said formed folds." 350 F.3d at 1211-1212 (emphasis supplied). By contrast, the steps of claim 5 include "detecting the occurrence of a tap gesture" and "detecting" where "said tap gesture occurred." The second "detecting" step in claim 5 of the '931 Patent, does not reference the completed result of the previous step, namely, the detected tap gesture, it merely refers to the actual "tap gesture" that occurred on the touchpad. See, e.g., Interactive Gift Express, Inc., 256 F.3d at 1344 (finding no necessary order of the steps where subsequent claims reference actions performed by previous claims, such as "providing a request reproduction code" (step 2), "providing an authorization code" (step 3), and "receiving the request reproduction code and the authorization code" (step 4).) Elantech ignores the Federal Circuit's ruling in Altiris, 318 F.3d at 1370, which is directly on point. In Altiris, plaintiff Altiris asserted a method claim that first listed a "testing automatically" step that was followed by other steps that were conditioned upon the result of the "testing" step. The "automatically testing" step required "reading a boot selection flag," but a later step recited "setting said boot selection flag." Although the preferred embodiment did follow the sequential order of the recited steps, the Court held that the claim language itself "neither grammatically nor logically indicates that the `setting' step must occur in a particular order compared to the other steps." Id. at 1370-71. Similarly, a careful reading of the actual claim terms reveals that there is no necessary order to the claimed method steps of
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claim 5 of the '931 Patent. The Court should not limit the claim steps to any particular order. (Wolfe Decl., ¶¶ 47-48, 59.) D. "Data Packet Processor" Is Not Limited to "Software."

Although Elantech did not choose Joint Claim Term 12 as one of the top four priorities for claim construction, Synaptics provides below its reply to Elantech's Opposition Brief to complete the record concerning the proper construction of Joint Claim Term 12. Elantech does not dispute with evidence that one of skill in the art would understand the ordinary words "data packet processor" to mean "hardware and/or program code, for example, software executed on a central processing unit, that processes data packets." (Wolfe Decl., ¶ 21 and Exhibit 7.) Elantech does not argue that the specification expressly defines the term "data packet processor" to have a special meaning. Instead, Elantech argues for an extraordinary, narrow meaning, because only one embodiment is disclosed. There is no basis in law or fact for such a narrow reading of the phrase "data packet processor." First, Elantech criticizes Synaptics' definition stating that "Perhaps recognizing that no such system is disclosed in the patent, Synaptics provides an `example' of such a system in its claim construction: `software executed on a central processing unit, that processes data packets.'" (Elantech Opp. Brief at 7:15-17.) In fact, Synaptics took this allegedly improper "example" from the description of the preferred embodiment in the patent specification: "Packet processor 20, implemented as a program on a central processing unit . . . ." (Wolfe Decl., Exhibit 3, '052 Patent, Col. 2, lines 52-54.) The patent also states, "[p]referrably, packet processor 20 is computer software executed on a central processing unit." (Id., ¶ 22 and Exhibit 3, '052 Patent, Col. 3, lines 14-17.) These statements make clear that the preferred embodiment of the "data packet processor" is not simply "software" alone, but software working with a hardware processing unit. Elantech's proposed definition is even narrower than the preferred embodiment, since Elantech focuses solely on "software," without hardware. Second, although Elantech's focus on "software" alone is inappropriate, it is also clear from the claims that "data packet processor" cannot reasonably be limited to the
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preferred embodiment of a software-based input device driver executed by a central processing unit. The inventors included the broad claim language "data packet processor" in claim 1 of the '052 Patent. The inventors narrowed the term "data packet processor" in claim 4, which is dependent upon claim 1, by stating the further limitation in claim 4 that "said data packet processor comprises a software-based input device driver executed by a central processing unit on said computer." (Wolfe Decl., Exhibit 3, '052 Patent, Col. 6, lines 35-37.) Thus, the inventors knew how to craft a narrow claim directed to the preferred embodiment and included that narrower limitation in claim 4. Under these facts, the Court should not read the narrower description of the preferred embodiment into the broader claim 1. Transmatic, 53 F.3d at 1277-78 (limitations from narrow claims cannot be read into broader claims). Third, the descriptions in the patent specification are not sufficient to conclude that the inventors intended to exclude the ordinary meaning of "processor" as a hardware unit. The inventors stated only that the invention was "preferably" software and hardware working together. The Federal Circuit has "repeatedly rejected the contention that depiction of a single embodiment in a patent necessarily limits the claims to that depicted scope." Agfa Corp. v. Creo Prods., Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1323); see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 907 (Fed. Cir. 2004); Teleflex v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002). Elantech cites no evidence that the Synaptics inventors expressly abandoned other embodiments in the prosecution correspondence with the examiner, or elsewhere. Indeed, the '052 Patent inventors made clear in their patent that: While the present invention has been described with reference to certain preferred embodiments, those skilled in the art will recognize that various modifications and other embodiments may be provided...These and other embodiments are intended to fall within the scope of the present invention. These and other variations upon and modifications to the embodiment described herein are provided for by the present invention which is limited only by the following claims.

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(Wolfe Decl., Exhibit 3, '052 Patent, Col. 6, lines 1-12.) Given these express statements, it would improper to limit the ordinary scope of "data packet processor" to the preferred embodiment. This is especially true in view of the trivial nature of the distinction Elantech is trying to establish: that somehow those of skill in the art reading the patent would not understand the common availability and interchangeability of hardware and software to perform data packet processing. The trivial interchangeability of software and hardware is undisputed in the relevant field of computer technology. (Wolfe Decl., ¶ 21.) See also Eolas Tech. Inc. v. Microsoft Corp., 399 F.3d 1325, 1339 (Fed. Cir. 2005), cert. denied, 126 S. Ct. 568 (2005) ("process and product ­ software and hardware ­ are practically interchangeable in the field of computer technology"); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1383 (Fed. Cir. 2001) (citing Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261, 1269-70 (Fed. Cir. 1999)) (hardware and software implementations found to be interchangeable substitutes in the art). The cases Elantech cites to support its effort to narrow the claims to one example from the specification are inapposite. The construction in those cases was supported by statements made during patent prosecution and not, as here, on an inference drawn from the inventors' choice to disclose one preferred embodiment of a program running on a processor that indisputably would have enabled those of skill in the art to develop and use a hardware only embodiment.4 The '052 Patent inventors did not intended to limit the phrase "data packet processor" to a "software" only embodiment. See Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998) (prosecution history demonstrates inventors clearly limited scope of claim at issue to distinguish invention from prior art); Bell Atl. Network Serv., Inc. v. Covad Comm'ns Group, Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001) (prosecution history and claim language support limitation of claim terms); Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d 1545, 1551-52 (Fed. Cir. 1996), abrogated on other grounds, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000) (en banc) (prosecution history shows "conspicuous and unambiguous" change made by inventors to narrow numerical range relating to claim term "relatively small"); Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1383-84 (Fed. Cir. 1999) (inventor limited claim term during prosecution of parent application).
4

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IV.

CONCLUSION The Court should reject Elantech's proposed constructions as impermissibly

narrowing the ordinary meaning without legal or factual justification. Synaptics requests that the Court adopt Synaptics' proposed claim constructions for the four Synaptics patents-insuit as set forth in the attached 3rd Amended Joint Claim Construction Chart.

Dated: February 21, 2007

KARL J. KRAMER ELLEN S. REINSTEIN ERIKA L. LABIT MORRISON & FOERSTER LLP

By:

/s/ Karl J. Kramer Karl J. Kramer Attorneys for Defendant SYNAPTICS, INC.

Pa1131388

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APPENDIX A

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3rd AMENDED JOINT CLAIM CONSTRUCTION CHART

Claim Terms
1. "tap gesture" ('931/'591) 2. "X and Y position information" ('931/'591) 3. "initiating a first signal to the host indicating the occurrence of said gesture" ('591) 4. "terminating said first signal" ('591) 5. "sending a second signal to said host indicating said second gesture" ('591) 6. "initiating a drag gesture signal to the host indicating the occurrence of a gesture" ('591) 7. "maintaining said drag gesture signal" ('591) 8. "repeatedly sending X and Y position information to said host for the duration of said second presence" ('591) 9. "initiating a signal to the host indicating the occurrence of said tap gesture" ('931) 10. "maintaining said signal for a predetermined period of time" ('931) 11. "detecting in which of at least one corner of the touchsensor pad said tap gesture occurred" ('931) 12. "data packet processor" ('052) 13. "incrementally move" ('411)

Synaptics Claim Construction

Elantech Claim Construction

"a quick tap of the finger on the pad, of short duration and involving little or no X or Y finger motion, that is presented to the host as a brief click of the mouse button" "information about the horizontal and vertical positioning of an object on a touch sensor"

"initiating transmission of a first set of data to a host that indicates that a tap gesture has occurred on the touch-sensor pad"

"outputting to the host a high state of a signal that has a low and a high state, and the high signal state represents that a double tap gesture will potentially occur on the touch-sensor pad" "changing the state of the signal from the high signal state to the low signal state" "changing the state of the signal from a low signal state to a high signal state for a predetermined period of time, and sending the high signal state to the host which interprets the termination of the first signal and the existence of a second high signal state as being a double tap gesture" "outputting to a host a high state of a signal that has a low and high state, and the high signal state represents that a drag gesture will potentially occur on the touch-sensor pad" "continuously outputting the high signal state"

"terminating the previous signal" "sending a second set of data to a host that indicates that a second tap gesture has occurred on the touch-sensor pad"

"initiating transmission of a first set of data to a host that indicates that a gesture has occurred on the touch-sensor pad"

"to continue, retain, or repeat the drag gesture signal"

"after the second presence is detected, repeatedly sending information about the horizontal and vertical positioning of an object on a touch sensor to a host while the second presence continues"

"initiating the transmission of a set of data to a host that indicates that a tap gesture has occurred on the touch-sensor pad" "to continue, retain, or repeat the signal for a period of time that was determined before"

"detecting that a tap gesture has occurred in at least one corner, the identity of which is distinguished in some way from other corners of the touch-sensor pad"

"outputting to the host a high state of a signal that has a low and a high state, where the high signal state represents that a tap gesture occurred on the touch-sensor pad" "continuously outputting the high state of the signal only for a predetermined time period (i.e., changing the signal state from high to low at the end of the predetermined time period)" "after detecting the occurrence of the tap gesture, separately detecting in which of at least one corner of the touch-sensor pad the tap gesture occurred"

"hardware and/or program code, for example, software executed on a central processing unit, that examines data packets" "to move in increments"

"software for processing data packets and sending messages" "movement defined by the second component of Equations 12 and 13 in the '411 patent, namely, S(Xcur ­Xcenter) and S(Ycur - Ycenter)"

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3rd AMENDED JOINT CLAIM CONSTRUCTION CHART

Claim Terms
14. "operative coupling" ('352) 15(a) "scanning the touch sensor" ('352) 15(b) "means for scanning the touch sensor . . ." ('352)

Synaptics Claim Construction

Elantech Claim Construction

"finger-induced electrical effect" "measuring the traces in the touch sensor and "examining information associated with the touch assigning them to a sequence corresponding to sensor" their physical order on the touch sensor" 112 ¶6 Claimed Function "scanning the touch sensor to (a) identify a first maxima in a signal corresponding to a first finger, (b) identify a minima following the first maxima, and (c) identify a second maxima in a signal corresponding to a second finger following said minima," as those terms are defined below 112 ¶6 Corresponding Structures analog multiplexor 45, capacitance measuring circuit 70, analog to digital converter 80, microcontroller 60 "measuring the trace values of the touch sensor "identify a first peak value in a finger profile corresponding to a first finger and determining obtained from scanning the touch sensor" the point at which the measured values cease to increase and begin to decrease"

16. "scanning the touch sensor to . . . identify a first maxima in a signal corresponding to a first finger" ('352) 17. "scanning the touch sensor to . . . identify a minima following the first maxima" ('352) 18. "scanning the touch sensor to . . . identify a second maxima in a signal corresponding to a second finger following said minima" ('352) 19(a) "providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima" ('352) 19(b) "means for providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima" ('352)

"measuring the trace values of the touch sensor following, in scan order, after the first maxima and determining the point at which the measured values cease to decrease and begin to increase" "measuring the trace values corresponding to a second finger following, in scan order, said minima and determining the point at which the measured values cease to decrease and begin to increase"

"identify the lowest value in the finger profile that occurs after the first peak value, and before another peak value is identified"

"after identifying the lowest value in the finger profile, identify a second peak value in the finger profile"

No further construction necessary since ordinary meaning is sufficient.

112 ¶6 Claimed Function "providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima" 112 ¶6 Corresponding Structure 112 ¶6 Corresponding Structure None microcontroller 60

pa-1117140

2