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 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.
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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
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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
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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
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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).
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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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