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"Pass through a liquid crystal display with low loss," "to [suit / fit] a particular application" and "well defined" fail to provide objective boundaries for those of skill in the art. The Federal Circuit recently found the term of degree "unobtrusive manner" indefinite. Defendants' objections on "low loss" are no rehash of prior arguments.
"Pass through a liquid crystal display with low loss," "to [suit / fit] a particular application" and "well defined" fail to provide objective boundaries for those of skill in the art. The Federal Circuit recently found the term of degree "unobtrusive manner" indefinite. Defendants' objections on "low loss" are no rehash of prior arguments.
"Pass through a liquid crystal display with low loss," "to [suit / fit] a particular application" and "well defined" fail to provide objective boundaries for those of skill in the art. The Federal Circuit recently found the term of degree "unobtrusive manner" indefinite. Defendants' objections on "low loss" are no rehash of prior arguments.
INNOVATIVE DISPLAY TECHNOLOGIES LLC, Plaintiff, Civil Action No. 2:13-cv-522-J RG (CONSOLIDATED - Lead Case) v. ACER INC., et al. Defendants. J URY TRIAL DEMANDED
DEFENDANTS REPLY IN SUPPORT OF THEIR OBJECTIONS TO THE AUGUST 26, 2014 CLAIM CONSTRUCTION MEMORANDUM AND ORDER
Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 1 of 8 PageID #: 2761
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In Interval Licensing LLC v. AOL, Inc., et al., 2014 WL 4435871, (Fed. Cir., Sept. 10, 2014), the Federal Circuit recently found the term of degree unobtrusive manner indefinite because it had too uncertain a relationship to the patents embodiments... and failed to provide objective boundaries for those of skill in the art. Like the term of degree in Interval Licensing, the claim terms pass through a liquid crystal display with low loss, to [suit/fit] a particular application, and well defined fail to provide objective boundaries for those of skill in the art. Defendants 1 respectfully request their objections (Dkt. No. 118) be sustained and that terms 1 through 3 be found indefinite and their proposed constructions of terms 4 through 8 be adopted. 2
A. Term 1: pass through a liquid crystal display with low loss Defendants objections on low loss are no rehash of prior arguments. Indeed, the Order clearly went beyond any argument made in the parties claim construction briefs and, instead of either finding the term was indefinite (Defendants position) or has plain meaning (Plaintiffs position), found that low loss did not limit the claims at all. That finding was contrary to law. See Dkt. No. 118, at 1-3. During prosecution of the 370 Patent, dependent claims 12 and 28 were objected to as depending from a rejected independent claim, but allowable if rewritten in independent form. See Def. Br., Ex. J at IDT0000767. In other words, the Patent Office maintained its rejection of independent claims 1 and 17 until the low loss limitation was included in those claims, and only after addition of that limitation did the Patent Office deem the claims patentable. Contrary
1 Hewlett-Packard Company, Huawei Investment and Holding Co., Ltd., Huawei Technologies Co., Ltd., and Huawei Device USA Inc. (collectively, Defendants) join this reply. 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 J udge Paynes claim construction ruling or whether Dells rights are preserved already. To the extent that it is procedurally proper for Dell to join this reply, Dell affirmatively joins it.
2 Only certain terms are addressed in this reply but Defendants maintain their objections on all terms as further set forth in their objections. Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 2 of 8 PageID #: 2762
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to Plaintiffs claim, Defendants cited the prosecution history of the 370 Patent which illustrates the materiality of low loss to patentability. See Dkt. 118, at 2. Independent claims 1 and 17 were amended to include the low loss term of original dependent claims 12 and 28. See Def. Br., Ex. J at IDT0000748, 751, 864, 866. In addition to Plaintiff ignoring the prosecution citations offered by Defendants, Plaintiff ignores Ranbaxy and Par Pharms., both of which stand for the proposition that dependent claims rewritten in independent form in response to an examiner objection have a substantial effect on patentability. See Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d 1235, 1240-41 (Fed. Cir. 2003); Par Pharms., Inc. v. TWI Pharms., Inc., 2013 WL 3777028, at *5 (D. Md. J uly 17, 2013). Plaintiffs responseechoing the Orders errordownplays low loss as a mere result of the recited structure. Dkt. No. 131, at 2. Yet, until the Order, Plaintiff clearly believed low loss was material to patentability. In their claim construction brief, Plaintiff exalts low loss as one of the goals of the invention, and that without low loss, the backlight would unnecessarily waste power and battery life and would not direct bright light through the LCD. Pl. Br. at 28. Low loss is not subject matter which adds nothing to the patentability or substance of the claim. Order at 53-54. Rather, low loss states a condition material to patentability and cannot simply be ignored. Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005). The problem with the term is that it cannot be understood by one of skill in the art, and therefore the law dictates that the term renders the claim indefinite, not that the term be simply ignored. As such, it was error for the Order to ignore this limitation and further error to not find the low loss terms indefinite. B. Term 3: well defined The Order was contrary to law when it did not find the term well defined indefinite. There is absolutely nothing in the specification that distinguishes between a well defined Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 3 of 8 PageID #: 2763
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deformity and a deformity, or anything in the specification that provides guidance on determining what a well defined deformity is with reasonable certainty. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). As a result, the claims incorporating this term are indefinite because there is no objective anchor that identifies the bounds of the claim. Endo Pharms. Inc. v. Watson Labs., Inc., 2014 U.S. Dist. LEXIS 84804, at *24 (E.D. Tex. J une 23, 2014) (Gilstrap, J .). The construction of well defined as distinct does not help, because distinct is just as ambiguous as well defined and again lacks support in the specification. C. Term 4: continuous side walls The Order erred in rejecting Defendants construction of continuous side walls and applied the wrong legal standard by requiring that the intrinsic and extrinsic evidence demand[] an uninterrupted limitation. Order at 16. In its response, Plaintiff ignores case law cited by Defendants and the cited portions of the specification and prosecution history that support Defendants position that the side walls need to be uninterrupted. Def. Br. at 5-8, Ex. C, at 1:41- 47; see also Fig. 6, Ex. H at J D0002580. The patent cannot now extend to cover such interruptions after they were excluded by amendment. Saffran v. Johnson & Johnson, 712 F.3d 549, 558-59 (Fed. Cir. 2013). Defendants construction should have been adopted. D. Term 6: the air gap terms Defendants reading of the Hou reference is not self-serving; indeed, Defendants reading is directly from Hou: 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). Applicant distinguished all of its 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. See Def. Br. at 15-16. Such a reading is contrary to law. Id.; Omega Engg Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003). Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 4 of 8 PageID #: 2764
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Dated: October 9, 2014
By: /s/ Sean N. Hsu Timothy C. Bickham tbickham@steptoe.com (pro hac vice) Scott M. Richey srichey@steptoe.com (pro hac vice) STEPTOE & J OHNSON LLP 1330 Connecticut Avenue, NW Washington DC 20036 (202) 429-5517 (202) 429-3902 (fax)
J effrey 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.
By: /s/ Jamie B. Beaber J amie B. Beaber (D.C. Bar No. 484186) Stephen E. Baskin (D.C. Bar No. 456015) Kfir B. Levy (D.C. Bar No. 989212) Tiffany A. Miller (D.C. Bar No. 982735) MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Telephone: (202) 263-3000 Facsimile: (202) 263-3300 jbeaber@mayerbrown.com sbaskin@mayerbrown.com klevy@mayerbrown.com Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 5 of 8 PageID #: 2765
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tmiller@mayerbrown.com
Robert G. Pluta (Illinois Bar No 6278255) Amanda K. Streff (Illinois Bar No 6307105) MAYER BROWN LLP 71 S. Wacker Drive Chicago, IL 60606 Telephone: (312) 701-8641 rpluta@mayerbrown.com astreff@mayerbrown.com
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 lllinois Bar No. 00049980 Email: kanderson@winston.com Winston & Strawn LLP 35 W. Wacker Drive Chicago, lllinois 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.
By: /s/ Jamie B. Beaber J amie B. Beaber (D.C. Bar No. 484186) Stephen E. Baskin (D.C. Bar No. 456015) Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 6 of 8 PageID #: 2766
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Kfir B. Levy (D.C. Bar No. 989212) Tiffany A. Miller (D.C. Bar No. 982735) MAYER BROWN LLP 1999 K Street, NW Washington, DC 20006 Telephone: (202) 263-3000 Facsimile: (202) 263-3300 jbeaber@mayerbrown.com sbaskin@mayerbrown.com klevy@mayerbrown.com tmiller@mayerbrown.com
Robert G. Pluta (Illinois Bar No 6278255) Amanda K. Streff (Illinois Bar No 6307105) MAYER BROWN LLP 71 S. Wacker Drive Chicago, IL 60606 Telephone: (312) 701-8641 rpluta@mayerbrown.com astreff@mayerbrown.com
Harry L. Gillam, J r. 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
Case 2:13-cv-00522-JRG Document 146 Filed 10/09/14 Page 7 of 8 PageID #: 2767
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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served this 9th day of October, 2014, with a copy of this document via electronic mail pursuant to Local Rule CV-5(d).
/s/ Jamie B. Beaber J amie B. Beaber
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