05
May
By Alex Gasser
On May 2, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 17 (dated November 9, 2010) in Certain Electronic Devices with Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In the Order, ALJ Luckern construed various claim terms in the asserted claims of U.S. Patent No. 5,825,352 (the ‘352 patent).

By way of background, the Complainant in this investigation is Elan Microelectronics Corporation of Taiwan (“Elan”) and the Respondent is Apple Inc. (“Apple”).  The investigation was instituted on April 23, 2010, based on Elan’s complaint filed on March 29, 2010.  See our April 26, 2010 post for more details.  ALJ Luckern conducted a Markman hearing on August 18 and 19, 2010 with all parties participating, followed by claim construction submissions and replies.

The ‘352 patent is directed to a “Multiple Fingers Contact Sensing Method For Emulating Mouse Buttons and Mouse Operations on a Touch Sensor Pad.”  According to the Order, ALJ Luckern first determined that one of ordinary skill in the art for ‘352 patent would have an education equivalent to a bachelor's degree in computer science, electrical engineering, or a similar technical degree, and three years of experience in touch-sensitive input devices.

With respect to three elements in claims 1 and 18 of the ‘352 patent, ALJ Luckern determined (1) that the disputed claim term “identify a first maxima in a signal corresponding to a first finger” means identify a first peak value in a finger profile taken on a straight line obtained from scanning the touch sensor, (2) that the disputed claim term “identify a minima following the first maxima” means identify the lowest value in the finger profile taken on said straight line that occurs after the first peak value, and before another peak value is identified,” and (3) that the disputed claim term “identify a second maxima in a signal corresponding to a second finger following said minima” means “after identifying the lowest value in the finger profile taken on said straight line, identify a second peak value in the finger profile taken on said straight line.”  The issue with the above terms was whether these steps could occur in any order, as advocated by Elan, or whether they must occur in the sequence suggested in the claims, as advocated by Apple and the Commission Investigative Staff (“OUII”).   According to the Order, based on the plain language of the claims, and statements and diagrams from the specification, ALJ Luckern agreed with Apple and OUII that claims 1 and 18 “include a temporal requirement to identify the first maxima, then later in time identify the minima following the first maxima, and still later in time identify the second maxima following said minima.”

ALJ Luckern determined that “control function” means “any function executed in response to the operative coupling of multiple fingers on a touch sensor,” thereby rejecting Apple’s and OUII’s argument for a more narrow definition that included only functions normally provided by the actuation of buttons or switches on a mouse.   According to the Order, although ALJ Luckern agreed that the specification supported a definition that included conventional mouse functions, there was nothing in the claims or specification that excluded additional functions.  However, ALJ Luckern also rejected Elan’s argument that “control function” should exclude cursor movement, since ALJ Luckern found that statements in the prosecution history supported the opposite conclusion.

ALJ Luckern next determined that the term “in response to” from claims 1 and 18 means “after and in reaction to,’ which further means “that the indication of the presence of two fingers must occur at some time after the identification of the claimed first and second maxima, and that said indication must occur in reaction to at least the claimed first and second maxima.”  At issue was (1) whether the “indication of the simultaneous presence of two fingers” must occur immediately after “identification of said first and second maxima” or if it could also occur after additional steps are executed; and (2) whether said identification must be the only factor used in triggering said indication, or if additional factors may also be considered.  ALJ Luckern determined that while the claim language states that the “indication” is in response to the “identification” and is listed as the next step, the claim does not affirmatively exclude intermediate steps between the identification and indication steps, nor do the claims indicate whether any other events may occur between the identification and indication steps.

ALJ Luckern then determined that the term “identify” means “recognize a value to be,” which requires both (1) analysis of the touch sensor signal and (2) designation of the location of the claimed maxima and minima.  Elan had argued that identification requires establishing the position at which the maximum or minimum occurs, but no further analysis of the value was required.  Apple and OUII, on the other hand, argued that the claim term requires that the maxima, the minima, and the second maxima be definitively recognized as existing as defined values as compared to just being a collection of raw data from which one might extract a value.  ALJ Luckern determined that Apple and OUII’s interpretations were more persuasive, since the claims, specification, and prosecution history would cause one of ordinary skill in the art to understand that identification requires analysis of the profile information to detect the claimed maxima and minima.

ALJ Luckern also determined that in claim 18, the term “means for 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” is written in means-plus-function format, and that the recited function is “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.”  ALJ Luckern further determined that the corresponding structure is an analog multiplexer, a circuit to measure changes in capacitance of sensor conductors, an analog to digital converter, a microcontroller, and Fig. 5 (items, 400-440) and Fig. 6-1 or Fig. 9-1 (items 200-278).

ALJ Luckern finally determined that in claim 18, the term “means for providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima,” is a means-plus-function claim, that the corresponding function is “providing an indication of the simultaneous presence of two fingers,” and the corresponding structure is step 860 of Figure 8 where the value of the “Finger” variable is set to equal two.  ALJ Luckern dismissed Elan’s proposed corresponding structure (i.e., “firmware or software that provides data indicating the presence of two fingers in response to the identification of two maxima and equivalents thereof”) as improper as a matter of law because it did not contain an algorithm.
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