UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`ASUS COMPUTER INT’L, et al.,
`Plaintiffs,
`
`v.
` EXOTABLET LTD.,
`Defendant.
`_______________________________/
`
`No. C 14-1743 PJH
`ORDER CONSTRUING CLAIMS,
`DENYING MOTION FOR
`PRELIMINARY INJUNCTION
`
`Before the court is defendant and counter-plaintiff ExoTablet Ltd.’s motion for
`preliminary injunction. Having read the parties’ papers and carefully considered their
`arguments, and the relevant legal authority, the court DENIES the motion as follows.
`BACKGROUND
`This is a patent infringement case. It was brought as a declaratory judgment action
`by accused infringers ASUS Computer International and ASUSTeK Computer Inc.
`(together, “ASUS”), against patent holder ExoTablet Ltd. (“ExoTablet”). In response to the
`complaint, ExoTablet filed a counterclaim accusing ASUS of infringement, and also filed the
`present motion for preliminary injunction.
`ExoTablet seeks to enjoin ASUS from making, using, offering to sell, selling, or
`importing its PadFone X device in the United States. ExoTablet alleges that the PadFone
`X infringes U.S. Patent 7,477,919 (“the ’919 patent”), which was filed to cover ExoTablet’s
`own “hybrid” device, the UniversalTransPad (referred to as the “UTP”).
`Both devices are referred to as “hybrid smartphone/tablet” devices that “combine[] a
`smartphone with a cradle in a ‘dumb’ tablet such that the ‘dumb’ tablet (i) effectively
`enlarges and enhances the screen size of the smartphone, (ii) provides an enlarged and
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`enhanced user interface (touch screen) for the smartphone, and (iii) displays what is, or
`otherwise would be, displayed on the smartphone.” In other words, each device is a tablet
`shell (also referred to as a tablet dock, and referred to in this order as an “input/output
`device,” based on the language used in the patent-in-suit).
`Before this suit was filed, ExoTablet approached ASUS in the hopes of reaching an
`agreement to license the ’919 patent. However, ASUS decided not to agree to a license,
`and instead, filed suit against ExoTablet on April 16, 2014, seeking a declaratory judgment
`that the PadFone X does not infringe ExoTablet’s patent. On May 21, 2014, ExoTablet
`answered the complaint, filed a counterclaim of infringement, and filed the present motion
`for preliminary injunction. At the time that the motion was filed, neither the UTP nor the
`PadFone X had been released, and ExoTablet thus sought to “preserve” the “brand-new”
`hybrid tablet/smartphone market, and retain its “first-mover advantage.”
`In its motion, ExoTablet took the position that “no formal claim construction is
`necessary because the claims of the ’919 patent use simple, clear terms that should all be
`accorded their plain and ordinary meaning.” However, after ASUS offered proposed
`constructions for four claim terms in its opposition brief, ExoTablet responded with new
`evidence (in the form of two expert declarations) supporting its view of how the terms
`should be construed.
`At the hearing, the court informed the parties that the disputed claim terms would
`need to be construed before the preliminary injunction motion could be decided, and that
`the court would not re-construe those terms later in the case. Thus, to ensure that both
`parties could be fully heard before the terms were construed, the court allowed ASUS to file
`a supplemental brief, in order to attempt to rebut the expert declarations filed with
`ExoTablet’s reply. This supplemental brief (which was filed on July 9, 2014), in conjunction
`with the arguments presented by both parties at the preliminary injunction hearing, ensures
`that both sides have been fully heard on the issue of claim construction as to the four terms
`that are currently disputed. Accordingly, the court will construe the disputed terms before
`addressing ExoTablet’s motion for preliminary injunction.
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`DISCUSSION
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`A.
`
`Claim construction
`1.
`Legal standard
`In construing claims, the court must begin with an examination of the claim language
`itself. The terms used in the claims are generally given their “ordinary and customary
`meaning.” See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005); see also
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (“The
`claims define the scope of the right to exclude; the claim construction inquiry, therefore,
`begins and ends in all cases with the actual words of the claim.”). This ordinary and
`customary meaning “is the meaning that the terms would have to a person of ordinary skill
`in the art in question at the time of the invention.” Phillips, 415 F.3d at 1313. A patentee is
`presumed to have intended the ordinary meaning of a claim term in the absence of an
`express intent to the contrary. York Products, Inc. v. Central Tractor Farm & Family Ctr.,
`99 F.3d 1568, 1572 (Fed. Cir. 1996).
`Generally speaking, the words in a claim are to be interpreted “in light of the intrinsic
`evidence of record, including the written description, the drawings, and the prosecution
`history, if in evidence.” Teleflex, Inc. v. Ficosa North Am. Corp., 299 F.3d 1313, 1324-25
`(Fed. Cir. 2002) (citations omitted); see also Medrad, Inc. v. MRI Devices Corp., 401 F.3d
`1313, 1319 (Fed. Cir. 2005) (court looks at “the ordinary meaning in the context of the
`written description and the prosecution history”). “Such intrinsic evidence is the most
`significant source of the legally operative meaning of disputed claim language.” Vitronics
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`With regard to the intrinsic evidence, the court’s examination begins, first, with the
`claim language. See id. Specifically, “the context in which a claim is used in the asserted
`claim can be highly instructive.” Phillips, 415 F.3d at 1314. As part of that context, the
`court may also consider the other patent claims, both asserted and unasserted. Id. For
`example, as claim terms are normally used consistently throughout a patent, the usage of a
`term in one claim may illuminate the meaning of the same term in other claims. Id. The
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`court may also consider differences between claims to guide in understanding the meaning
`of particular claim terms.
`Second, the claims “must [also] be read in view of the specification, of which they
`are a part.” Id. at 1315. When the specification reveals a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise possess, the
`inventor’s lexicography governs. Id. at 1316. Indeed, the specification is to be viewed as
`the “best source” for understanding a technical term, informed as needed by the
`prosecution history. Id. at 1315. As the Federal Circuit stated in Phillips, the specification
`is “the single best guide to the meaning of a disputed term,” and “acts as a dictionary when
`it expressly defines terms used in the claims or when it defines terms by implication.” 415
`F.3d at 1321.
`Limitations from the specification, such as from the preferred embodiment, cannot
`be read into the claims absent an express intention to do so. Teleflex, 299 F.3d at 1326
`(“The claims must be read in view of the specification, but limitations from the specification
`are not to be read into the claims.”) (citations omitted); CCS Fitness, Inc. v. Brunswick
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“a patentee need not describe in the
`specification every conceivable and possible future embodiment of his invention.”); Altiris v.
`Symantec Corp., 318 F.3d 1363, 1372 (Fed. Cir. 2003) (“resort to the rest of the
`specification to define a claim term is only appropriate in limited circumstances”). To
`protect against this, the court should not consult the intrinsic evidence until after reviewing
`the claims in light of the ordinary meaning of the words themselves. Texas Digital
`Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204-05 (Fed. Cir. 2002) (to act otherwise
`“invites a violation of our precedent counseling against importing limitations into the
`claims”) (citations omitted).
`Finally, as part of the intrinsic evidence analysis, the court “should also consider the
`patent’s prosecution history, if it is in evidence.” Phillips, 415 F.3d at 1317. The court
`should take into account, however, that the prosecution history “often lacks the clarity of the
`specification” and thus is of limited use for claim construction purposes. Id.
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`In most cases, claims can be resolved based on intrinsic evidence. See Vitronics,
`90 F.3d at 1583. Only if an analysis of the intrinsic evidence fails to resolve any ambiguity
`in the claim language may the court then rely on extrinsic evidence, such as expert and
`inventor testimony, dictionaries, and learned treatises. See Vitronics, 90 F.3d at 1583 (“In
`those cases where the public record unambiguously describes the scope of the patented
`invention, reliance on any extrinsic evidence is improper”). However, the court generally
`views extrinsic evidence as less reliable than the patent and its prosecution history in
`determining how to read claim terms, and its consideration is within the court’s sound
`discretion. See Phillips, 415 F.3d at 1318-19.
`2.
`Construction of disputed terms and phrases
`The parties dispute the construction of four terms or phrases1 contained within claim
`1 of the patent-in-suit, which are addressed in turn below.
`a.
`“handheld”
`ExoTablet argues that this term should be given its “ordinary common meaning,”
`which is that something is “holdable in one’s hand.” ASUS argues that the term should be
`construed as “pocketsize and used in one hand.”
`For support, ASUS cites to the patent’s specification, which states that the product
`“can be held in the user’s hand when in use,” and which identifies specific comparable
`products. ’919 patent, column 8, lines 8-12. ASUS includes pictures of each of these
`products (the Blackberry PDA, among others) in its opposition brief, to show that they are
`all “pocket-size and used in one hand.” ASUS further cites to the patent’s prosecution
`history, during which the examiner described the invention as being “small enough to be
`hand-held while in use,” a description which ExoTablet did not dispute.
`
`1In its supplemental brief, ASUS also proposed constructions for two new terms
`(“input/output device” and the last “wherein” clause), claiming that ExoTablet’s reply brief
`included “new construction[s]” for these terms. Dkt. 44 at 9-10. ExoTablet later clarified that
`it had not proposed those terms for construction, and that “the only terms for construction
`before the court are those addressed at the hearing.” Dkt. 52 at 4. The court agrees with
`ExoTablet, and will construe only those four terms that were addressed at the hearing.
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`ExoTablet argues that the term “handheld” can encompass tablet-sized devices, and
`maintains that ASUS lacks support for its “pocketsize” limitation.
`Overall, the court agrees with ASUS that the specification states that the device “can
`be held in the user’s hand when in use,” but finds no support for ASUS’ “pocketsize”
`limitation. Accordingly, the court construes “handheld” as “holdable and usable in one’s
`hand.”
`
`“carried by hand”
`b.
`ExoTablet argues that this term should be given its plain and ordinary meaning,
`which is that something is “carried, or carriable, by hand.” ASUS argues that the term
`should be construed as “carried in one hand like a cell phone.”
`ASUS bases its argument on the fact that the patent’s specification draws a
`distinction between laptops and cell phones, the latter of which are described as
`“convenient to carry around, relative to laptops.”
`ExoTablet argues that the patent is not limited to devices that are “carried in only
`one hand like a cell phone,” as the “purpose of the invention is to provide a larger-format
`interface than the typical cell phone provides.”
`The court finds no support for ASUS’ construction, because while the patented
`device certainly must be capable of being carried by hand, it need not be carried “like a cell
`phone.” However, because ExoTablet’s proposed construction largely parrots the actual
`claim language, and because both parties use the word “carried” in their proposed
`constructions, the court declines to construe this term, and instead lets plain and ordinary
`meaning govern.
`“cradle”
`c.
`ExoTablet argues that this term is a “well-known term of art” that refers to an
`“electronic docking station.” ASUS argues that the term should be construed as “the top
`surface of an adapter.”
`ASUS’ proposed construction is based on the specification’s statement that “the
`adapter [160] can have a curved top surface that forms a cradle for a portable phone with a
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`curved bottom.” ’919 patent, column 8, lines 31-33.
`ExoTablet argues that the specification “simply describes one example of a
`preferred geometry of a particular cradle – namely, a cradle designed to accommodate the
`recited ‘telephone with a curved bottom.’”
`The court agrees with ExoTablet, especially given that ASUS’ quoted portion of the
`specification is clear in stating that the adapter “can have a curved top surface.” Nothing in
`the specification requires the cradle to be located on the top surface of an adapter.
`However, ExoTablet’s cited evidence defines “cradle” as a “dock” or “docking station,”
`rather than an “electronic docking station.” See Dkt. 33, ¶ 54. Accordingly, the court
`construes “cradle” to mean a “docking station.”
`d.
` “providing a wirelessly portable interface”
`As an initial matter, the court notes that claim 1 does not use the same phrasing as
`that presented by the parties, as the actual claim language describes the input/output
`device as “providing a handheld, wirelessly portable, enhanced user interface” for the
`mobile telephone. ’919 patent, column 10, lines 9-11. However, rather than presenting the
`phrase as “providing a . . . wirelessly portable . . . interface,” the court will present the
`phrase in the same manner as did the parties.
`ExoTablet argues that this phrase “means that the hybrid device is wirelessly
`portable due to the fact that it has no dangling wires.” ASUS argues that the phrase
`“means that the claimed input/output device must include its own wirelessly portable
`interface not provided by the mobile phone.”
`For support, ExoTablet relies on language in the specification stating that “there are
`no dangling wires between the phone and the device.” ’919 patent, column 9, lines 61-62.
`ASUS also points to the specification for support, focusing on a passage stating that
`the input/output device “can include a wireless transmitter and a wireless receiver that send
`and receive radio or other frequency signals to and from the portable phone . . . or the port
`can be provide [sic] by an infrared or other optical transmitter and receiver for
`communicating with similar components on a modified portable phone.” ’919 patent,
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`column 6, line 65–column 7, line 4.
`ExoTablet argues that ASUS’ proposed construction is refuted by the principle of
`claim differentiation – specifically, because claim 17 specifically requires “wireless
`communication . . . between the input/output device and the mobile telephone,” claim 1
`should not be interpreted to cover the same claim scope.
`The court finds that both parties’ proposals are flawed. The best insight as to the
`meaning of “providing a wirelessly portable interface” actually comes from the claim
`language itself, which explains that:
`the mobile telephone input/output device holding the mobile telephone is
`configured to be conveniently operated while handheld and used as an
`integrated wireless communication device in which the mobile telephone
`engages in wireless communications while the input/output device operates
`as a handheld, wirelessly portable, enhanced user interface for the mobile
`telephone.
`
`’919 patent, claim 1 (emphasis added).
`Based on that claim language, the court finds that the input/output device, when
`combined with the mobile phone, must provide a wirelessly portable interface for the
`combined device. In other words, when the devices are combined, they must be capable of
`use without any wires (i.e., no power cord, no Internet cable, etc.). Interestingly, the
`declaration of David Hughes (filed with ExoTablet’s reply) does mention this interpretation,
`stating that one potential interpretation of “providing a wirelessly portable interface” is that
`“the communications between the integrated input/output device-mobile telephone
`combination and the ‘off-board’ or ‘outside’ world” must have wireless capability.” Dkt. 33,
`¶ 63. However, Dr. Hughes ultimately concludes that the phrase means that “the portable
`interface has no dangling wires between the mobile telephone and the interface.” Id., ¶ 79.
`The court disagrees with Dr. Hughes’ conclusion, and instead construes “providing a
`wirelessly portable interface” to mean “providing a means for the combined device to
`operate and communicate without any external wires.”
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`B.
`
`Motion for preliminary injunction
`Having construed the disputed terms, the court will now address the merits of
`ExoTablet’s motion for preliminary injunction.
`1.
`Legal standard
`A plaintiff (or, in this case, a counter-plaintiff) seeking a preliminary injunction must
`establish that it is likely to succeed on the merits, that it is likely to suffer irreparable harm in
`the absence of preliminary relief, that the balance of equities tips in its favor, and that an
`injunction is in the public interest. Winter v. Natural Resources Defense Council, Inc., 129
`S.Ct. 365, 374 (2008).
`An injunction is a matter of equitable discretion” and is “an extraordinary remedy that
`may only be awarded upon a clear showing that the plaintiff is entitled to such relief.”
`Winter, 129 S.Ct. at 376, 381.
`In this circuit, a party seeking an injunction may alternatively demonstrate that
`serious questions going to the merits were raised and that the balance of hardships tips
`sharply in its favor, “so long as the plaintiff also shows that there is a likelihood of
`irreparable injury and that the injunction is in the public interest.” Alliance for Wild Rockies
`v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011). However, because the injunction sought
`by ExoTablet is based on the alleged “violation of any right secured by a patent,” the law of
`the Federal Circuit applies. See Hybridtech, Inc. v. Abbott Laboratories, 849 F.2d 1446,
`1451 n.12 (Fed. Cir. 1988) (regional circuit law applies only to “purely procedural
`questions”).
`2.
`
`Legal analysis
`a.
`Likelihood of success on the merits
`To show a likelihood of success on the merits, ExoTablet must “demonstrate that it
`will likely prove infringement of one or more claims” of the patent-in-suit, and “that at least
`one of those same allegedly infringed claims will also likely withstand the validity
`challenges presented by the accused infringer.” Astra-Zenica LP v. Apotex, Inc., 633 F.3d
`1042, 1050 (Fed. Cir. 2010).
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`To successfully rebut any showing of likelihood of success on the merits, ASUS
`need only raise a “substantial question of invalidity,” rather than meeting the “clear and
`convincing evidence” burden that would be applicable at trial. Altana Pharma AG v. Teva
`Pharmaceuticals USA, Inc., 566 F.3d 999, 1005-06. If ASUS raises a “substantial
`question” of invalidity, the burden would then shift to ExoTablet to “show that the defense
`lacks substantial merit.” Id. at 1006.
`ExoTablet argues that it is likely to succeed on its counterclaim of infringement of
`claim 1 of the ’919 patent. ASUS raises three challenges: (1) the accused device does not
`infringe claim 1, (2) certain terms of claim 1 (specifically, “conveniently carried by hand” and
`“conveniently operated while handheld”) are indefinite, rendering claim 1 invalid, and (3)
`claim 1 is anticipated and/or obvious in light of two cited prior art references (“Kumar” and
`“Lebby,” described in more detail below).
`i.
`Infringement
`In its motion, ExoTablet argued that none of claim 1’s terms needed to be construed,
`and that ASUS’ PadFone X met every claim limitation under the plain and ordinary meaning
`of each claim term. In its opposition, ASUS argued its product “does not infringe claim 1 of
`the ’919 patent because the PadFone X is not ‘handheld,’ is not ‘carried by hand,’ lacks a
`‘cradle,’ and is not ‘wirelessly portable,’ as required by the claim.” Having now construed
`those four terms, the court will now determine whether ExoTablet is likely to succeed on the
`merits of its infringement argument.
`The court has construed the term “handheld” to mean “holdable and usable in one’s
`hand.” ExoTablet argues that the tablet-sized PadFone X is indeed holdable and usable in
`one’s hand, while ASUS’ non-infringement argument is based on the inclusion of the word
`“pocketsize” in its proposed construction, which would exclude tablet-sized devices from
`claim 1’s scope. Having rejected the “pocketsize” limitation, the court finds that a tablet-
`sized device is “holdable and usable in one’s hand,” and thus, ExoTablet is likely to
`succeed on the merits of its infringement argument as to the term “handheld.”
`The court did not construe the term “carried by hand,” and instead allowed the
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`term’s plain and ordinary meaning to govern. ExoTablet argues that the tablet-sized
`PadFone X can indeed be carried by hand, while ASUS’ non-infringement argument is
`based on its proposed construction that the device must be “carried in one hand like a cell
`phone.” Having rejected ASUS’ proposed construction, the court finds that the PadFone X
`can indeed be carried by hand, and thus, the court finds that ExoTablet is likely to succeed
`on the merits of its infringement argument as to the term “carried by hand.”
`The court has construed the term “cradle” to mean “docking station.” ExoTablet
`argues that the PadFone X has a place for the mobile phone to dock into the tablet shell,
`thus meeting this limitation. ASUS’ non-infringement argument is based on the
`requirement, in its proposed construction, that the cradle consist of a “curved top surface”
`on the device. Having rejected ASUS’ proposed construction, the court finds that
`ExoTablet is likely to succeed on the merits of its infringement argument as to the term
`“cradle.”
`The court has construed the term “providing a wirelessly portable interface” to mean
`“providing a means for the combined device to operate and communicate without any
`external wires.” Even though ExoTablet proposed a different construction of this term, it did
`argue (in its reply) that “in at least one claimed configuration the inventive device and the
`mobile phone serve as an ‘integrated wireless communication device.’” Dkt. 28 at 6. ASUS’
`non-infringement argument is based on the requirement, in its proposed construction, that
`the tablet shell have independent wireless communication capability. The court rejected
`ASUS’ construction, and found that claim 1 required only that the combined (i.e.,
`integrated) device have wireless capability. The evidence cited by ExoTablet (in particular,
`the PadFone X commercial shown at the hearing) shows that the integrated PadFone X
`device (i.e., the tablet shell with the phone docked) has wireless capability, and thus, the
`court finds that ExoTablet is likely to succeed on the merits of its infringement argument as
`to the term “providing a wirelessly portable interface.”
`Based on the foregoing, the court finds that ExoTablet is likely to succeed on the
`merits of its claim that the accused device meets the limitations of claim 1. However, in
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`order to determine whether a preliminary injunction is warranted, the court must first
`address ASUS’ invalidity defenses.
`ii.
`Invalidity – indefiniteness
`As discussed above, in order to defeat ExoTablet’s motion, ASUS need not show
`that the ’919 patent is invalid by “clear and convincing evidence.” Instead, it need only
`raise a “substantial question of invalidity,” after which the burden would shift to ExoTablet to
`show that the invalidity defense “lacks substantial merit.”
`ASUS’ first invalidity defense is based on the argument that the terms “conveniently
`carried by hand” and “conveniently operated while handheld” (referred to as “the
`‘conveniently’ terms”) are indefinite, rendering claim 1 invalid. The Supreme Court recently
`articulated a new standard for indefiniteness, holding 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 about
`the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124
`(2014).
`ASUS argues that the “conveniently” terms are indefinite under the “reasonable
`certainty” standard, and cites to the Federal Circuit’s opinion in Datamize, LLC v. Plumtree
`Software, Inc. for support. 417 F.3d 1342 (Fed. Cir. 2005). The Datamize court held that
`the term “aesthetically pleasing” was indefinite, as it “depend[ed] solely on the unrestrained,
`subjective opinion of a particular individual purportedly practicing the invention” and that a
`“purely subjective construction . . . would not notify the public of the patentee’s right to
`exclude since the meaning of the claim language would depend on the unpredictable
`vagaries of any one person’s opinion of the aesthetics of interface screens.” 417 F.3d at
`1350. The court notes that Datamize was decided under an indefiniteness standard which
`required an accused infringer to show that a term was “insolubly ambiguous,” a stricter
`standard than the current “reasonable certainty” standard.
`ASUS argues that the “conveniently” terms are “completely dependent on a person’s
`subjective opinion,” making the scope of the claim terms uncertain, as was the case in
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`Datamize. ASUS argues that a person with large hands might find certain phones
`convenient to operate while handheld or convenient to carry by hand, while others may not.
`ExoTablet responds by arguing that “conveniently carried by hand” means “that the
`size, weight, bulkiness, and/or expense is less than that of a typical laptop computer,” and
`that the term “conveniently operated while handheld” means that “the display screen for the
`inventive device is larger than the display screen of a typical mobile telephone, that a
`QWERTY-type keyboard is included with the inventive device, or both.” ExoTablet also
`points out that “the word ‘conveniently’ appears in several other issued patents further
`indicating that the term has a common ordinary meaning that is not indefinite.”
`Here, the court finds the analysis set forth by the Datamize court to be instructive.
`The court explained that “when faced with a purely subjective phrase . . . a court must
`determine whether the patent’s specification supplies some standard for measuring the
`scope of the phrase.” 417 F.3d at 1351 (quoting Seattle Box Co. Industrial Crating &
`Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)).
`As to the phrase “conveniently carried by hand,” the specification does refer to the
`fact that cell phones are “small, lightweight, and convenient to carry around, relative to
`laptops” which provides some context for the admittedly-subjective2 term “convenient.” See
`’919 patent, column 1, lines 41-42. However, the court is puzzled by ExoTablet’s
`suggestion that the “expense” of the device bears on the convenience of carrying it around.
`Despite the inherent subjectivity of the term “convenient,” the court does find that the
`specification’s comparison between phones and laptops appears to “suppl[y] some
`standard for measuring the scope of the phrase,” and thus, finds that ASUS has not raised
`a “substantial question of invalidity” regarding the indefiniteness of the term “conveniently
`carried by hand.”
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`2The dictionary definition of “convenient” that ExoTablet provides (in the Hughes
`declaration) supports ASUS’ argument that the term is subjective, as it defines “convenient”
`to mean “suited or favorable to one’s comfort, purpose, or needs.” Dkt. 33 at ¶ 40 (from the
`American Heritage College Dictionary) (emphasis added).
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`As to the phrase “conveniently operated while handheld,” ExoTablet’s expert
`declaration offers the following explanation of its meaning:
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`“[C]onveniently operated while handheld” can indicate that the inventive
`device possesses a larger display screen (as opposed to the handicap of a
`“small screen” typical of the mobile telephones of the era and described [at]
`’919 patent, Column 1, Lines 52-53; or the handicap of a “mini-screen” typical
`of the mobile telephones of the era and described [at] ’919 patent, Column 2,
`lines 1-8) – and/or that the inventive device possesses a keyboard (as
`opposed to the handicap of a “small keypad” typical of the mobile telephones
`of the era and described [at] ’919 patent, Column 1, lines 52-53; or the
`handicap of a “mini-keypad” typical of the mobile telephones of the era and
`described [at] ’919 patent, Column 2, lines 1-8).
`Hughes decl. (Dkt. 33), ¶ 44.
`The court does not find that those cited passages ““suppl[y] some standard for
`measuring the scope” of the term “conveniently operated while handheld.” Instead,
`ExoTablet’s expert has merely cited passages discussing distinctions between the claimed
`invention and the prior art, and assumed that those distinctions make the claimed invention
`“conveniently operated while handheld.” While the claimed invention’s inclusion of a
`QWERTY keyboard may indeed make it more attractive to users than a mobile phone with
`a “mini-keypad,” the larger keyboard does not make the claimed invention more
`“convenient” to operate while handheld – if anything, a QWERTY keyboard would require
`two hands to type, which would preclude its use “while handheld.” Similarly, the claimed
`invention’s larger screen may make it more attractive to users than a phone with a small
`screen, but the specification does not connect the larger screen with the convenience of
`operating the device while handheld. Thus, even read in light of the specification, the term
`“conveniently operated while handheld” appears not to “inform, with reasonable certainty,
`those skilled in the art about the scope of the invention.” Accordingly, the court finds that
`ASUS has raised a “substantial