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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-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
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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.
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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


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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.

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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 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
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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).
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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)
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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


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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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