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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

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’ 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 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.

Defendants1 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 (Plaintiff’s

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 Judge Payne’s claim construction ruling or whether Dell’s 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.


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to Plaintiff’s 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. July 17, 2013).

Plaintiff’s response—echoing the Order’s error—downplays “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”


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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. June

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 JD0002580. 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 Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003).


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Dated: October 9, 2014

By: /s/ Sean N. Hsu

Timothy C. Bickham [email protected] (pro hac vice) Scott M. Richey [email protected] (pro hac vice) STEPTOE & JOHNSON LLP 1330 Connecticut Avenue, NW Washington DC 20036 (202) 429-5517 (202) 429-3902 (fax) Jeffrey J. Cox [email protected] State Bar No. 04947530 Sean N. Hsu [email protected] 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

Jamie 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 [email protected] [email protected] [email protected]


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[email protected] 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 [email protected] [email protected] Peter J. Chassman Texas Bar No. 00787233 Email: [email protected] Phillip D. Price Texas Bar No. 24060442 Email: [email protected] 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: [email protected] 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: [email protected] 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

Jamie B. Beaber (D.C. Bar No. 484186) Stephen E. Baskin (D.C. Bar No. 456015)


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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 [email protected] [email protected] [email protected] [email protected] 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 [email protected] [email protected] 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 [email protected] Terry D. Garnett [email protected] Peter J. Wied [email protected] GOODWIN PROCTER LLP 601 S Figueroa Street 41st Floor Los Angeles, California 90017 Tel: 213.426.2500 Fax: 213.623.1673

ATTORNEYS FOR DEFENDANT HEWLETT-PACKARD COMPANY


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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 Jamie B. Beaber


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