Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 1 of 7 PageID #: 2819
October 20, 2014
Mayer Brown LLP 1999 K Street, N.W. Washington, D.C. 20006-1101 Main Tel +1 202 263 3000 Main Fax +1 202 263 3300 www.mayerbrown.com Jamie B. Beaber Direct Tel +1 202 263 3153 Direct Fax +1 202 263 5209 jbeaber@mayerbrown.com VIA ELECTRONIC COURT FILING (ECF) The Honorable Rodney Gilstrap District Judge for the Eastern District of Texas - Marshall Division Sam B. Hall Jr. Federal Building and United States Courthouse 101 East Houston Street Marshall, Texas 75670 Re: Request for Leave to File Motion for Summary Judgment of Invalidity Pursuant to 35 U.S.C. 112 in Innovative Display Techs., LLC v. Acer Inc., et al., Case No. 2:13-CV-00522-JRG 1
Dear Judge Gilstrap: Defendants Dell Inc. (Dell) and Hewlett-Packard Company (HP) respectfully request permission to file a motion for summary judgment of invalidity pursuant to 35 U.S.C. 112 that (i) certain claims of U.S. Patent No. 7,384,177 (the 177 Patent) and U.S. Patent No. 7,404,660 (the 660 Patent) lack written description; and (ii) certain claims of the 177 Patent, U.S. Patent No. 7,537,370 (the 370 Patent); U.S. Patent No. 7,300,194 (the 194 Patent); and U.S. Patent No. 7,434,974 (the 974 Patent) (collectively, the Asserted Patents) are indefinite, and thus invalid. I. INVALIDITY FOR LACK OF WRITTEN DESCRIPTION The Asserted Patents all claim priority to a single application filed on June 27, 1995. This application had a description consisting of just four pages of drawings and 17 pages of double- spaced text. Yet from this single application, representatives for the applicant filed over 60 different applications, with the latest of the patents in this litigation, the 816 Patent, being filed in 2011more than 16 years after the filing of the first application to which it claims priority. With each new filing, the applicants massaged certain existing language and added in new language to the specificationand the claims. As a result, there are numerous claim limitations that have no written description support in the original patent filing, or in the specification of the patents in which these limitations appear. Defendants request leave to seek summary judgment that two of these limitations lack written description. For these two terms, identified below, there is no material dispute that they do not appear in the original patent filing. Nor is there a dispute that these terms fail to appear in the patent specifications outside of the claims themselves. Thus, Defendants will be able to show that they are entitled to summary judgment that the claims containing these limitations are invalid for lack of written description support. The written description requirement contained in Section 112 requires that the specification of a patent must contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the [invention]. The focus of the written description requirement is on the disclosure, and whether
1 Case no. 2:13-cv-523-JRG and case no. 2:13-cv-524-JRG have been consolidated into this lead case. Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 2 of 7 PageID #: 2820 The Honorable Rodney Gilstrap October 20, 2014
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the specification reasonably conveys to those skilled in the art that, as of the filing date, the inventor was in possession of what is claimed. Ariad Pharma, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (the hallmark of written description is disclosure). Thus, the analysis requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Id. [I]t is the specification itself which must demonstrate possession. Id. at 1352. Although compliance with the written description requirement has been deemed a question of fact, [c]ompliance with the written-description requirement is . . . amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the nonmoving party. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (affirming district courts grant of summary judgment of invalidity where nothing in written description disclosed a claimed limitation). A. At Least One Secondary Flat, Angled, Faceted Or Curved Reflective Or Refractive Surface To Facilitate Better Mixing Of Light Rays Within The Cavity Or Recess To Produce A Desired Light Output Color Lacks Written Description Claim 15 of the 177 Patent includes the limitation at least one secondary flat, angled, faceted or curved reflective or refractive surface to facilitate better mixing of light rays within the cavity or recess to produce a desired light output color or uniformity. Claim 15 is also the first and only time in the 177 Patent that secondary reflective or refractive surfaces are discussed in connection with producing a desired light output color. The only disclosure of such secondary flat, angled, faceted or curved reflective or refractive surfaces in the specification of the 177 Patent comes in a single paragraph, which states, in part, as follows: Additionally, one or more secondary reflective or refractive surfaces 38 may be provided on the panel member 33 and/or tray 35 to reflect a portion of the light around one or more corners or curves in a non-rectangular shaped panel member 33. These secondary reflective/refractive surfaces 38 may be flat, angled, faceted or curved, and may be used to extract a portion of the light away from the panel member in a predetermined pattern. (177 Patent, at 7:3-10). This description says nothing about the secondary reflective or refractive surfaces being used to produce a desired light output. Instead, the 177 Patent discloses only three means for affecting the color of the output light: (i) use of colored light sources (id. at 1:59-62, 4:20-38); (ii) mixing of colored light sources in a transition area (id. at 1:63-67, 7:13-31); and (iii) use of colored films (id. at 5:3-12, 5:61-65, 6:34-38). Because the limitation at least one secondary flat, angled, faceted or curved reflective or refractive surface to facilitate better mixing of light rays within the cavity or recess to produce a desired light output color . . . is entirely unsupported by the specification in the 177 Patent, a person of ordinary skill in the art would not have understood the named inventor to have been possession of this feature, and thus claim 15 and all claims that depend therefrom are invalid for lack of written description. B. Configured To Generate Light Having An Output Distribution Defined By A Greater Width Component Than Height Component Lacks Written Description Claim 1 of the 660 Patent is directed to a light emitting panel assembly that comprises a Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 3 of 7 PageID #: 2821 The Honorable Rodney Gilstrap October 20, 2014
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plurality of light sources configured to generate light having an output distribution defined by a greater width component than height component. Claim 33 of the 660 Patent similarly recites a plurality of LED light sources with each light source configured to generate light having an output distribution defined by a greater width component than height component. The specification of the 660 Patent does not discuss these limitations at all. The first time the 660 Patent refers to configured to generate light having an output distribution defined by a greater width component than height component is in claims 1 and 33. The terms width component, and height component, do not appear anywhere in the 660 Patent outside of the claims. Because the 660 Patent specification does not include a discussion of any of these terms and how they relate to the light sources, it is unclear exactly what is meant by light sources being configured to generate light having an output distribution defined by a greater width component than height component. The specification provides no clarification on this issue, nor does it disclose how either a plurality of light sources (claim 1) or each light source (claim 33) can be configured to obtain the claimed output distribution. Accordingly, a person of ordinary skill in the art would not have understood the named inventor to have been possession of this feature, and thus claims 1 and 33 and all claims that depend therefrom are invalid for lack of written description. II. INVALIDITY BASED ON INDEFINITENESS The Patent Act requires that a patent specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention. 35 U.S.C. 112, 2. The Supreme Courts recent Nautilus opinion held that: A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (emphasis added). Indeed, [w]ords 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. Endo Pharmaceuticals Inc. v. Watson Labs., Inc., No. 2:13-cv-192, 2014 U.S. Dist. LEXIS 84804, at *24 (E.D. Tex. June 23, 2014) (Gilstrap, J.). In addition, because indefiniteness is a question of law, it is amenable to a determination on summary judgment. See, e.g., Ergo Licensing LLC v. CareFusion 303 Inc., 673 F.3d 1361, 1362 (Fed. Cir. 2012). In the Courts Order on Claim Construction (Dkt. No. 101), the Court found the term quite small to be indefinite and the 547 Patent invalid. Yet based on testimony from the sole named inventor occurring since the Courts Order, there is additional evidence that other terms of degree in the Asserted Patents lack the necessary objective anchor, and are just as indefinite as the term quite small. A. The Low Loss Terms Are Indefinite 2
Independent claims 1, 16, and 28 of the 194 Patent, and independent claims 1 and 29 of the 370
2 Magistrate Judge Payne did not find the low loss terms themselves to be either definite or indefinite in his Claim Construction Order, but rather that the limitations containing low loss were analogous to a whereby clause and did not limit the claims. (Dkt. No. 101.) Defendants have filed objections to the Order in this regard. (Dkt. No. 118.) Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 4 of 7 PageID #: 2822 The Honorable Rodney Gilstrap October 20, 2014
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Patent all include limitations that require certain structures (optical elements or deformities or at least one film, sheet or substrate) to redirect the light or change the distribution of light such that it passes through a liquid crystal display with low loss. For example, claims 1 and 29 of the 370 Patent require at least one film, sheet or substrate overlying at least a portion of one of the sides of the panel member to change the output distribution of the emitted light such that the light will pass through a liquid crystal display with low loss. (370 Patent, at 9:22-26, 11:19- 23). These low loss terms are terms of degree that are inherently subjectivemuch like the indefinite term quite small. The specifications of the 194 Patent and the 370 Patent fail to provide any standard for determining low loss as opposed to other types of loss (e.g., high loss or medium loss). The specifications of these patents only utilize the term low loss once, stating, For example, if the panel assemblies are used to provide a liquid crystal display backlight, the light output will be more efficient if the deformities 21 cause the light rays to emit from the panels at predetermined ray angles such that they will pass through the liquid crystal display with low loss. (194 Patent, at 5:25-32; 370 Patent, at 5:17-23.) This sole passage provides no guidance on the meaning of low loss versus other types of loss, such as, for example, high loss. In addition, when asked how a person might know whether or not the low loss limitation was being met, the named inventor of these patents, Jeffrey Parker, could not explain how this determination could be made. Instead, Mr. Parker admitted to the subjective nature of the terms, stating that every company is different in what they find is acceptable, and that the term low loss encompasses all kinds of stuff. (Deposition Tr. of J. Parker, at 154:10 161:15.) The prosecution histories of these patents also do not provide guidance regarding the term low losswith one important exception. During the prosecution of the application for the 370 Patent, in response to an examiners objection the applicants specifically amended the independent claims to add the low loss limitation; as a result, the term low loss is significant to the patentability of the claims and cannot be ignored. 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). Indeed, 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. (Dkt. No. 69, at 28.) Because the low loss terms are significant to the patentability of the term, and because, as recognized by Mr. Parker, there is no objective way to interpret such terms, these claims are indefinite. B. The Well Defined Terms are Indefinite 3
Independent claims 1, 16, 28, and 31 of the 194 Patent all require optical elements or deformities that are well defined or are of well defined shape. For example, claims 1 and 16 of the 194 Patent require at least one of the reflective or refractive surfaces has well defined optical elements or deformities. (194 Patent, at 9:29-33, 10:14-18.) It is significant that these claims do not simply recite defined optical elements or deformities, but rather well defined. Thus, these well defined terms are terms of degree that are inherently subjectivemuch like the indefinite term quite small.
3 Magistrate Judge Payne did not find the well defined terms to be indefinite in his Claim Construction Order. (Dkt. No. 101.) However, Defendants have filed objections to the Order in this regard. (Dkt. No. 118.) Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 5 of 7 PageID #: 2823 The Honorable Rodney Gilstrap October 20, 2014
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When a word of degree is used[,] the district court must determine whether the patents specification provides some standard for measuring that degree. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005). Here, the specification of the 194 Patent never uses the term well defined, and never provides a standard for determining whether a feature is well defined. Although the 194 Patent does provide examples of optical elements or deformities, it never identifies any specific features as being well defined, nor does the patent distinguishes between features that are well defined versus those that are not. Instead, the specification creates more confusion by providing examples of optical elements/deformities that may or may not be considered well defined according to the 194 Patent, such as random shapes, and shapes or a pattern with no specific angles. (194 Patent, at 5:45, 6:15-16.) Moreover, when asked multiple times how a person of ordinary skill in the art might distinguish well defined features from features that were not well defined, the sole inventor, Mr. Parker, could not provide an answer. (Parker Tr., at 355:20-363:2.) Finally, like the quite small term that Magistrate Judge Payne held indefinite, the patent examiner in a related action patent application determined that deformities having a well-defined shape was indefinite because well-defined is indefinite. (See Mar. 29, 2012 Office Action in App. Ser. No. 12/946,077, at 2.) Thus, claims 1, 16, 28, and 31 and all related dependent claims of the 194 Patent fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention, and are indefinite. C. The Terms With To [Suit/Fit] a Particular Application Are Indefinite 4
Claims 1, 14 and 15 of the 177 Patent; claim 5 of the 974 Patent; and claim 31 of the 194 Patent all include limitations that require elements that function in a manner so as to suit a particular application or fit a particular application. For example, claim 5 of the 974 Patent requires a film positioned near the light emitting surface of the panel member for changing the output ray angle distribution of the emitted light to fit a particular application. (974 Patent, at 9:36-39). These limitations are not supported because the specifications of these patents do not provide any information that would allow a person of ordinary skill to determine with any reasonable degree of certainty whether the elements at issue function in the required manner to suit a particular application or fit a particular application. Rather than providing guidance regarding these terms, the specifications of these patents only create uncertainty by suggesting that the claimed devices might be used in an endless variety of applications. (See 194 Patent, at 9:1-7; 974 Patent, at 8:57-63;177 Patent, at 9:1-7.) Without any guidance from the specification, whether or not a device suits or fits a particular application depends entirely on the subjective opinions of an individual examining a device, and these terms are therefore indefinite. 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.). For the foregoing reasons, Defendants Dell and HP respectfully request permission to file a motion for summary judgment pursuant to 35 U.S.C. 112, that the claims containing the above indefinite and unsupported terms are invalid.
4 Magistrate Judge Payne did not find the to [suit/fit] a particular application terms to be indefinite in his Claim Construction Order. (Dkt. No. 101.) However, Defendants have filed objections in this regard. (Dkt. No. 118.) Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 6 of 7 PageID #: 2824 The Honorable Rodney Gilstrap October 20, 2014
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Respectfully submitted, /s/ Jamie B. Beaber Jamie B. Beaber
cc: Counsel of Record Case 2:13-cv-00522-JRG Document 153-1 Filed 10/20/14 Page 7 of 7 PageID #: 2825
Eastern Rotorcraft Corporation v. The United States v. Sidney G. Sandnes, Edward S. Sandnes, and Arnold G. Sandnes, A Partnership, D.B.A. Sandnes' Sons, Third-Party, 384 F.2d 429, 3rd Cir. (1967)