Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 1 of 33
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`Case No. 1:19-cv-00819-ADA
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`Case No. 1:19-cv-00873-ADA
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`Case No. 1:19-cv-00874-ADA
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`Case No. 1:19-cv-00898-ADA
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`Plaintiff,
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`v.
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`Defendant.
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`NEODRON LTD.,
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`DELL TECHNOLOGIES INC.,
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`NEODRON LTD.,
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`Plaintiff,
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`v.
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`HP, INC.,
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`Defendant.
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`NEODRON LTD.,
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`v.
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`Plaintiff,
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`MICROSOFT CORPORATION,
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`Defendant.
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`NEODRON LTD.,
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`v.
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`Plaintiff,
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`AMAZON.COM, INC.,
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`Defendant.
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 2 of 33
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`NEODRON LTD.,
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`v.
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`Plaintiff,
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`Case No. 1:19-cv-00903-ADA
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Defendant.
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`DEFENDANTS’ REPLY CLAIM CONSTRUCTION BRIEF ON
`THE DISPUTED TERMS OF THE TOUCH SENSOR PATENTS
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`(U.S. PATENT NOS. 8,946,574; 9,086,770; 9,823,784; 10,088,960; and 7,821,502)
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 3 of 33
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`TABLE OF CONTENTS
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`Page
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`I.
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`THE DISPUTED TERMS OF U.S. PATENT NO. 9,823,784 .........................................1
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`A.
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`“wherein the plurality of drive electrodes are substantially area filling
`within the sensing region relative to the plurality of sense electrodes”
`(claims 1-3). ........................................................................................................1
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`1.
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`2.
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`Neodron’s “Absolute” Limitation Contradicts the Claims and File
`History. ...................................................................................................2
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`Neodron’s Intrinsic Citations Confirm the Lack of Guidance for
`the Meaning of the Term as Written.........................................................5
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`3.
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`There is No Genuine Factual Dispute between the Experts. .....................7
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`B.
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`“together, the plurality of sense electrodes and the plurality of isolated
`conductive elements are substantially area filling within the sensing region
`relative to the plurality of sense electrodes” (claims 1-3). ....................................8
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`II.
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`THE DISPUTED TERMS OF U.S. PATENT NO. 7,821,502 ....................................... 10
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`A.
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`B.
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`C.
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`“a substrate having a surface with an arrangement of electrodes mounted
`thereon” (claims 1-2, 5-8, 11-14, 16). ................................................................ 10
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`“sensing area” (claims 1-2, 5-8, 11-14, 16). ....................................................... 16
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`“wherein row sensing electrodes of sensing cells at opposing ends of at
`least one of the rows are electrically coupled to one another by respective
`row wrap-around connections made outside of the sensing area” (claims 1-
`2, 5-8, 11-14, 16)............................................................................................... 19
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 4 of 33
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Brazabra Corp. v. CE Soir Lingerie Co., Inc.,
`No. 1-18-cv-00683, Dkt. No. 35 (W.D. Tex. Aug. 15, 2019) ................................................. 6
`
`Kaneka Corp. v. Xiamen Kingdomway Group Co.,
`790 F.3d 1298 (Fed. Cir. 2015) ............................................................................................ 12
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`McRO, Inc. v. Bandai Namco Games Am., Inc.,
`No. 2019-1557, slip op. (Fed. Cir. May 20, 2020) ................................................................ 12
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`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .............................................................................................................. 1
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`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd.,
`521 F.3d 1351 (Fed. Cir. 2008) ...................................................................................... 11, 16
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................................... 12, 13
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`Power Mosfet Techs., L.L.C. v. Siemens AG,
`378 F.3d 1396 (Fed. Cir. 2004) ............................................................................................ 20
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`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016)........................................................................................ 12, 13
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`Thorner v. Sony Computer Entertainment Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ...................................................................................... 11, 22
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`Versata Software, Inc. v. Zoho Corp.,
`213 F. Supp. 3d 829 (W.D. Tex. 2016) .................................................................................. 6
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996).............................................................................................. 21
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`Other Authorities
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`37 C.F.R. § 1.83 ........................................................................................................................ 21
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 5 of 33
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`Defendants respectfully submit their reply claim construction brief for the remaining
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`disputed terms of U.S. Patent Nos. 9,823,784 and 7,821,502 (collectively the “touch sensor
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`patents”).1
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`I.
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`THE DISPUTED TERMS OF U.S. PATENT NO. 9,823,784
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`Neodron does nothing to address the fundamental problem of its indefinite claims: it is
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`impossible to know what infringes the ’784 patent based upon the claim language, the
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`specification, or the file history. This is why the law requiring definiteness exists. Nautilus, Inc.
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`v. Biosig Instruments, Inc., 572 U.S. 898, 909-11 (2014). The ’784 patent claims are invalid,
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`because they are indefinite.
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`A.
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`“wherein the plurality of drive electrodes are substantially area filling within
`the sensing region relative to the plurality of sense electrodes” (claims 1-3).
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`Defendants’ Construction
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`Neodron’s Construction
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`Indefinite
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`Plain and ordinary meaning; no construction
`necessary
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`Neodron’s responsive brief obfuscates the issue. The issue is not whether “substantial”
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`or “substantially area filling” is indefinite. Neodron Resp. Br. at 28-29. Nor is the issue whether
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`“relative to” is indefinite. Id. at 29. The issue is whether the actual requirement stated in the
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`claims—that the drive electrodes be “substantially area filling within the sensing region relative
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`to the plurality of sense electrodes”—is indefinite. Defendants’ Op. Br. at 11. That full
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`language is indefinite because it is subject to several different possible meanings, with no
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`resolution possible from the specification or prosecution history. Does the limitation (1) raise
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`the threshold (e.g., “drive electrodes” must be both substantially area filling and more area
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` 1
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` The parties have reached agreement on the previously disputed terms in the 8,946,574 and
`10,088,960 patents and, therefore, those patents are not addressed is this reply brief.
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 6 of 33
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`filling than the sense electrodes), (2) lower the threshold (e.g., “drive electrodes” must be
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`substantially area filling compared to the sense electrodes, regardless of whether they are area
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`filling on their own), or (3) mean something else entirely?
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`Neodron asserts that the first option is appropriate, then strains to eliminate any other
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`possibility in order to rescue the claims. Neodron Resp. Br. at 30, 33. But Neodron’s arguments
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`fail. Neodron’s entire opposition hinges on reading an “absolute” limitation into claims 1-3 (i.e.,
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`the drive electrodes must be substantially area filling in an absolute sense, not just “relative to”
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`the sense electrodes). This effort only highlights what is missing from the claims. In fact, the
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`prosecution history shows that the Patentee knew exactly how to claim such an “absolute”
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`requirement, but opted not to do so. Neodron’s concessions about the limited disclosure in the
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`specification confirm there is no guidance for the meaning of the full term as written.
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`1.
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`Neodron’s “Absolute” Limitation Contradicts the Claims and File
`History.
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`Neodron argues claims 1-3 should be redrafted to include a distinct “absolute limitation”
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`and a distinct “relative limitation.” Neodron Resp. Br. at 28. The “absolute limitation” would
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`require that the drive electrodes be “substantially area filling” on their own—without a relative
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`comparison with the sense electrodes. Id. at 30; see also id. at 33 (arguing “the specification
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`explains the benefit of drive electrodes” that “‘cover the first layer’ almost ‘entirely’”). The
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`“relative limitation” would then require a separate comparison of the two, in which the drive
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`electrodes are more area filling than the sense electrodes. Id. at 29. Neodron’s effort would
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`rewrite the claim by eliminating the “relative to” qualifier from the “substantially area filling”
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`limitation (“wherein the plurality of drive electrodes are substantially area filling within the
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`sensing region relative to the plurality of sense electrodes”).
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`Neodron’s effort to fix the claims by rewriting them contradicts the prosecution history.
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 7 of 33
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`Neodron emphasizes that this very phrase was part of the “original” claims filed in 2009. Id. at
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`28. The Patentee proposed this language for claim 1: “wherein the drive electrodes substantially
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`entirely cover the first layer.” Defendants’ Op. Br., Ex. A, 4/10/2009 U.S. Pat. App. No.
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`12/421,705 at 39 (Claim 1). What Neodron fails to mention is that the Patentee removed this
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`clause from the claims. The limitation was rejected as anticipated by the prior art. Supplemental
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`Declaration of John Guaragna, Ex. O, 6/6/2011 Rejection at 2-3 (“Hotelling teaches a capacitive
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`touch sensor . . . wherein the drive electrodes substantially entirely cover the first layer with
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`individual ones of the drive electrodes being separated from neighboring drive electrodes by
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`small gaps[.]”) (emphasis added). In response, the Patentee removed it entirely:
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`Defendants’ Op. Br., Ex. B, 10/6/2011 Amendment at 2. Struggling to overcome Hotelling, the
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`Patentee introduced a new phrase requiring that the drive electrodes be substantially area filling
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`“relative to” the sense electrodes:
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 8 of 33
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`Id., Ex. C, 5/16/2012 Amendment at 2.
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`The prosecution history leaves no doubt. The Patentee knew exactly how to claim drive
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`electrodes that “substantially entirely cover the first layer.” But that limitation was stricken and
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`replaced with a relative—not absolute—term. This change left the claims untethered to the
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`specification’s disclosures of “substantiality,” which examined the drive electrodes “in the first
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`layer” without regard to the sense electrodes in the second layer. Now, Neodron strains to
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`reclaim the deleted limitation to save the indefinite claims it actually received.
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`Neodron attempts to excuse reading in an absolute limitation by citing the alleged
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`benefits of the limitation. The plain language of the claims and the patent’s prosecution history
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`show that the Patentee did not write these claims to accomplish these alleged benefits. And
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`without the limitation in the actual claims, its benefits are irrelevant.
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`First, Neodron insists the “drive electrodes are separated from each other only by small
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`gaps.” Neodron Resp. Br. at 25 (emphasis added). But the claims do not say that. As before,
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`the Patentee knew how to specify “gap size.” It did so in the original claims filed in 2009:
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`“wherein the drive electrodes substantially entirely cover the first layer with individual ones of
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`the drive electrodes being separated from neighboring drive electrodes by small gaps.”
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`Defendants’ Op. Br., Ex. A, 4/10/2009 Application at 39 (Claim 1) (emphasis added). On
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`October 6, 2011, however, the Patentee struck that language. Id., Ex. B, 10/6/2011 Amendment
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`at 2.
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`Next, Neodron insists the claims have a visual requirement. Neodron Resp. Br. at 30-31.
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`But the claims do not say that either. Claims 1-3 concern an electrode “area.” They do not recite
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`a requirement for electrode visibility to the human eye such as an “invisible” or “almo st
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`invisible” electrode pattern. Id. at 30. Had the Patentee wanted to limit the claim to meet any
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 9 of 33
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`specific visual requirements, it could have done so. In fact, once again, the file history shows the
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`Patentee knew precisely how to claim that characteristic. See Defendants’ Op. Br., Ex. A,
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`4/10/2009 Application at 39 (Claim 4) (“The capacitive touch sensor of claim l, wherein the
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`small gaps are dimensioned to be sufficiently small to be invisible or almost invisible.”)
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`(emphasis added). On October 6, 2011, the Patentee struck that language, too. Id., Ex. B,
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`10/6/2011 Amendment at 2.
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`Finally, Neodron tries to read a “noise” prevention requirement into the claims. Neodron
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`contends the claim must require “filling the entire area” because it “provides an electrical
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`shielding effect, cutting down noise emanating from below the touch sensor” from a “screen” or
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`“display,” or “LCD” module. Neodron Resp. Br. at 30-31 (citing ’784 patent at 8:4-9). For a
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`third time, Neodron inserts requirements that are found nowhere in the claim. Neodron also
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`reads in hardware. For instance, claim 1 is directed to a “sensor.” ’784 patent at 19:49. No
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`claim recites a “screen” or “display module.” Again, the Patentee knew how to claim “display”
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`hardware when desired—original claim 11 recited: “The capacitive touch sensor of claim l,
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`further comprising a display module arranged below the first layer.” Defendants’ Op. Br., Ex.
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`A, 4/10/2009 Application at 40 (Claim 11) (emphasis added). On October 6, 2011, the Patentee
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`canceled that entire claim. Id., Ex. B, 10/6/2011 Amendment at 3.
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`2.
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`Neodron’s Intrinsic Citations Confirm the Lack of Guidance for the
`Meaning of the Term as Written.
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`Unable to rewrite the claim as more definite, i.e., as requiring drive electrodes that
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`“substantially entirely” fill the sensing region on their own, Neodron’s remaining argument only
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`confirms there is inadequate guidance in the specification for the actual term in claims 1-3.
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`Neodron concedes that the claim “requires a comparison; in this context, a comparison between
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`the drive electrodes and the sense electrodes.” Neodron Resp. Br. at 29 (emphasis added). Yet
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 10 of 33
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`none of Neodron’s citations set out a definition for how that comparison is made. As
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`underscored in Defendants’ Opening Brief, neither the phrase “area filling . . . relative to” nor the
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`phrase “relative to the sense electrodes” appears in the specification. Defendants’ Op. Br. at 12.
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`Neodron has no response.
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`Instead, Neodron concedes that the “preferred embodiment[s]” cited in its brief only
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`depict drive electrodes that essentially fill the “entire” first layer. Neodron Resp. Br. at 33.
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`These do not shed light on the scope of the actual term, which requires drive electrodes that are
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`“substantially area filling . . . relative to” the sense electrodes. As discussed, the drive electrodes
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`need not necessarily cover the “entire” first layer in order to meet the claims—for example,
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`nothing forecloses patterns in which the drive electrodes fill less of the total area but still fill
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`much more area than the sense electrodes. And even if one were to accept Neodron’s position
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`that these citations are relevant to the term, these preferred embodiments would only describe an
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`upper boundary. They are not definitional. The specification still fails to define the lower
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`boundary of the claim. There is no example in the specification of an electrode pattern that fails
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`to meet the term. Versata Software, Inc. v. Zoho Corp., 213 F. Supp. 3d 829, 836 (W.D. Tex.
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`2016) (term indefinite where patent “provide[d] examples of when something constitutes a
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`space-constrained display” but failed to articulate “when something is not a space-constrained
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`display”); Brazabra Corp. v. CE Soir Lingerie Co., Inc., No. 1-18-cv-00683, Dkt. No. 35 at 10
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`(W.D. Tex. Aug. 15, 2019) (term indefinite where patent had “examples of what may be
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`‘substantial’ coverage” but did “not otherwise provide any examples of when the adhesive fails
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`to cover ‘a substantial area’”).
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`Likewise, the examples in Figures 2A, 7B, 8A, and 13 are just particular
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`embodiments. They do not explain what types of patterns would not meet the claims, or provide
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 11 of 33
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`any explanation of how to evaluate whether a pattern that does not look like those embodiments
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`(almost entirely filled or flooded with drive electrodes) is or is not “substantially area filling
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`within the sensing region relative to the plurality of sense electrodes.” Therefore, a POSITA is
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`left without any meaningful guidance as to the requirements of this limitation.2
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`3.
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`There is No Genuine Factual Dispute between the Experts.
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`Mr. Flasck’s entire declaration rests on the faulty assumption that claims 1-3 must
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`include Neodron’s purported “absolute” limitation. See, e.g., Flasck Resp. Decl. ¶ 20. Because
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`that position contradicts the intrinsic record, Mr. Flasck’s statements that these vague claims are
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`concrete and limited to this absolute requirement are unsupported and unhelpful. See id. ¶ 21;
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`¶ 26 (inserting requirement that “drive electrodes are, considered on their own, substantially
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`area filling within the sensing region”) (emphasis added); ¶ 22 (opining unclaimed benefits
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`dropped during prosecution make claims definite).
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`Like Neodron, Mr. Flasck does not contest the fact that, if the claims do not contain this
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`“absolute” limitation, claims 1-3 are indefinite. If the claims encompass a lower threshold (e.g.,
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`drive electrodes need only be substantially area filling in comparison to the “sense electrodes” in
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`Layer 2 regardless of whether drive electrodes entirely fill Layer 1), Mr. Flasck is unable to
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`contest that there is no guidance in the intrinsic record for how to determine whether the
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`limitation is satisfied. A POSITA would have to determine whether, for instance, an electrode
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`pattern with 40% of the area filled by drive electrodes is substantially area filling relative to
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`sense electrodes filling 10%, without any guidance in the specification or file history. Mr. Flasck
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` 2
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` Neodron also points out that these figures show sense electrodes that are narrow. Neodron
`Resp. Br. at 25 (stating “the sense electrodes 804 on Layer 2 do not substantially fill the space”).
`A requirement for narrow sense electrodes does not inform one about how much more area the
`“drive electrodes” must fill to be “substantially area filling . . . relative to the sense electrodes.”
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 12 of 33
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`does not opine that a POSITA could—without reading in an absolute limitation—be reasonably
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`certain about the claim scope.
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`By contrast, Defendants’ expert, Dr. Silzars, did opine on the issue and the actual claim
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`language, explaining why one of ordinary skill would lack reasonable certainty. Neodron misses
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`the point when asserting that “Dr. Silzars refuses to say that the hypothetical 40% area filling
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`drive electrodes would be ‘substantially area filling . . . relative to’ the 10% area filling sense
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`electrodes.” Neodron Resp. Brief at 32. Dr. Silzars’s point is that it is impossible for a POSITA
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`to determine whether a solution with 40% area filling drive electrodes would be “substantially
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`area filling . . . relative to” 10% area filling sense electrodes in view of the claim language as it is
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`written:
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`[I]f the drive electrodes occupied 40% of the area of the sensing region and the sense
`electrodes occupied 10% of the sensing region, the drive electrodes would not seem to be
`“substantially area filling,” but they would be more area filling than the sense electrodes.
`It is unclear whether they would be “much” more area filling than the sense electrodes.
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`Silzars Decl. ¶ 90.
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`Because there is no “absolute” limitation, it is not enough for a POSITA to determine
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`whether the drive electrodes are, on their own, “substantially area filling.” A POSITA must be
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`able to determine whether drive electrodes are substantially area filling “relative to” the sense
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`electrodes. And there is an undisputed lack of guidance in the specification for when that term is
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`met. Consequently, claims 1-3 are indefinite.
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`B.
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`“together, the plurality of sense electrodes and the plurality of isolated
`conductive elements are substantially area filling within the sensing region
`relative to the plurality of sense electrodes” (claims 1-3).
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`Defendants’ Construction
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`Neodron’s Construction
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`Indefinite
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`Plain and ordinary meaning; no construction
`necessary
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`The flaws in Neodron’s position are reinforced by its arguments for the second term.
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 13 of 33
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`Once again, Neodron insists this second term includes an “absolute” limitation. See Neodron
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`Resp. Br. at 34-35. In Neodron’s view, the plain language requires “the sense electrodes and
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`isolated elements ‘together . . . are substantially area filling within the sensing region,’ without
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`reference to the sense electrodes alone.” Id. (emphasis added). The claims say the opposite:
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`“the plurality of sense electrodes and the plurality of isolated conductive elements are
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`substantially area filling within the sensing region relative to the plurality of sense electrodes.”
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`’784 patent at 20:8-11 (emphasis added). The claim phrase “relative to” the sense electrodes
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`cannot mean “without reference to” those electrodes. For this reason alone, Neodron’s argument
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`should be rejected.
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`As with the first term, the file history contradicts Neodron’s argument. Neodron argues
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`the term’s meaning is “concrete” because “the sense electrodes and the isolated elements
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`together substantially entirely cover the second layer.” Neodron Resp. Br. at 34-35 (quoting
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`’784 patent at 5:4-11). But that section of the specification relates to the original claim language,
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`which recited that the “sense electrodes and the isolated elements together substantially entirely
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`cover the second layer.” Defendants’ Op. Br., Ex. A, 4/10/2009 U.S. Pat. Application No.
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`12/421,705 at 40 (Claim 9). That language was stricken from the claims (id., Ex. B, 10/6/2011
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`Amendment at 3 (striking “entirely”); id., Ex. C, 5/16/2012 Amendment at 3 (striking “cover the
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`second layer”)), and then the indefinite “substantially area filling . . . relative to” phrase was
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`added (id.). Defendants pointed to this intrinsic evidence illustrating the broadened scope of the
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`term in their opening brief (Defendants’ Op. Br. at 17), but Neodron has no response.
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`Given that there is no support for an absolute limitation to rescue the claims, a POSITA is
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`tasked with trying to understand what the relative comparison here requires. As Dr. Silzars
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`opined, “as the sense electrodes become thinner, a Person of Ordinary Skill is confronted with
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 14 of 33
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`the question: how much more area must be filled by ‘isolated conductive elements’ to maintain
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`the standard of ‘substantially area filling?’” Silzars Decl., ¶ 95. Mr. Flasck does not dispute
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`Dr. Silzars’s statement that to a POSITA the “specification and prosecution history offer no
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`clarity as to how to answer this question.” Id. Mr. Flasck’s opinion rests on an absolute
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`limitation that does not exist. When the combination fills less than the entire area but still a
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`considerable amount—e.g., 60%, 70%, or 80% compared to the sense electrodes alone filling
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`20%—he offers no evidence for how a POSITA could know whether that combination meets the
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`term. Likewise, Neodron’s intrinsic evidence only illustrates that particular embodiments fill the
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`space entirely with a combination of the sense electrodes and isolated conductive elements. This
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`does not provide clarity or boundaries as to what it means for that combination to be
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`substantially area filling “relative to” the sense electrodes alone. See Fig. 8A.
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`Because the claims do not recite an “absolute” limitation and could encompass other
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`types of patterns that fill less than the entire second layer, a POSITA is left without enough
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`guidance in the intrinsic record of the ’784 patent to know when the claim is met.
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`II.
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`THE DISPUTED TERMS OF U.S. PATENT NO. 7,821,502
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`Three claim terms remain in dispute for the ’502 patent.
`
`A.
`
`“a substrate having a surface with an arrangement of electrodes mounted
`thereon” (claims 1-2, 5-8, 11-14, 16).
`
`Defendants’ Construction
`
`Neodron’s Construction
`
`Plain and ordinary meaning in light of the
`specification, i.e. “a substrate having a side
`with an arrangement of electrodes mounted
`thereon”3
`
`Plain and ordinary meaning; no construction
`necessary: “a substrate having a surface with an
`arrangement of electrodes mounted thereon”
`
`
`Despite an obvious dispute about the scope and meaning of this phrase, Neodron
`
`
`
` Neodron’s briefs omit the “plain and ordinary meaning” portion of Defendants’ construction.
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 15 of 33
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`continues to insist that “surface” need not be construed. Neodron seeks to leave the term open-
`
`ended. To support its flawed position, Neodron cites Thorner v. Sony Computer Entertainment
`
`Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012), which does not apply here. In Thorner, the disputed
`
`term “attached” had only one plain and ordinary meaning, and the issue was whether “attached”
`
`should be limited to “affixed to an exterior surface.” Id. at 1367 (“The plain meaning of the term
`
`‘attached’ encompasses either an external or an internal attachment.”). Here, “surface” has
`
`multiple plain and ordinary meanings, and Neodron does not dispute that “side” is one of them.
`
`Nor can it, because Defendants’ construction is entirely consistent with the “any face” definition
`
`from Webster’s Unabridged Dictionary, and—most importantly—is consistent with the
`
`specification of the ʼ502 patent. See Suppl. Guaragna Decl., Corrected Ex. G (“any face of a
`
`body or thing; the six surfaces of a cube”); see also ’502 patent at Abstract, 1:34-37, 2:21-25,
`
`3:1-7. Thus, even if Neodron were correct that another plain and ordinary meaning of “surface”
`
`is the outside part or exterior of an object, the Court still would need to resolve the dispute about
`
`claim scope between “side” and “entire exterior.” The reasoning of Thorner therefore does not
`
`apply. Rather, when a court is faced with a claim term having multiple plain and ordinary
`
`meanings, the court should construe the term. O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
`
`Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no
`
`construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more
`
`than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve
`
`the parties’ dispute.”).
`
`Neodron argues that the meaning of “surface” must be its cited dictionary definitions in
`
`the absence of disclaimer or lexicography. Neodron Resp. Br. at 3. The Federal Circuit has
`
`repeatedly rejected Neodron’s position, holding it is improper to “limit the role of the
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`Case 1:19-cv-00819-ADA Document 72 Filed 06/05/20 Page 16 of 33
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`specification in a claim construction to serving as a check on the dictionary meaning of a claim
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`term if the specification requires the court to conclude that fewer than all the dictionary
`
`definitions apply, or if the specification contains a sufficiently specific alternative definition or
`
`disavowal.” Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (emphasis added); see
`
`also Kaneka Corp. v. Xiamen Kingdomway Group Co., 790 F.3d 1298, 1304-05 (Fed. Cir. 2015)
`
`(recognizing that “sealed” may have more than one plain and ordinary meaning and rejecting
`
`dictionary definition even though “the specification does not specifically define the term
`
`‘sealed’”); PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 752
`
`(Fed. Cir. 2016) (“The fact that ‘around’ has multiple dictionary meanings does not mean that all
`
`of these meanings are reasonable interpretations in light of this specification.”).
`
`The present case falls squarely in the Phillips-Kaneka-PPC Broadband line of cases. A
`
`court construing a claim term like “surface” that is alleged to have multiple plain and ordinary
`
`meanings must reject any dictionary definition that is inconsistent with the intrinsic evidence.
`
`Kaneka, 790 F.3d at 1304-05 (rejecting dictionary definition of “sealed” as inconsistent with
`
`specification); PPC Broadband, 815 F.3d at 752-53 (Fed. Cir. 2016) (rejecting dictionary
`
`definition of “around” as inconsistent with the specification); see also McRO, Inc. v. Bandai
`
`Namco Games Am., Inc., No. 2019-1557, slip op. at 13 (Fed. Cir. May 20, 2020) (rejecting
`
`textbook definition of “vector” as inconsistent with specification). Here, Neodron’s dictionary
`
`definitions are inconsistent with the specification. The ’502 patent specification’s repeated use
`
`of phrases like “the opposing surface,” “an upper surface” and “an opposing lower surface”
`
`would make no sense if a substrate—such as a solid piece of glass or plastic—had only a single
`
`exterior “surface.” See, e.g., ’502 patent at Abstract, 1:34-37, 2:21-25, 3:1-7; see also
`
`Defendants’ Op. Br., Exs. E, F (similar usages in file history). Neodron’s dictionary definitions
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`also are inconsistent with the purported advantages of the claimed invention over the prior art:
`
`“Because the position sensor is based on sensing electrodes on only a single surface, it can be
`
`cheaper to manufacture than known double-sided position sensors.” ’502 patent at 3:1-3
`
`(emphasis added). If “surface” meant the entire exterior of a substrate, as Neodron now
`
`contends, the applicants would have had no basis or reason to distinguish “known double-sided
`
`position sensors” from their purported invention.
`
`Tellingly, Neodron’s response brief ignores the patent specification and makes no attempt
`
`to demonstrate any error in Defendants’ analysis. Neodron therefore tacitly concedes that its
`
`dictionary definitions are inconsistent with the specification. Instead, Neodron mischaracterizes
`
`Defendants’ construction, incorrectly suggesting it relies on “some disclaimer or lexicography”
`
`that deviates from plain and ordinary meaning. Neodron Resp. at 3. As detailed above,
`
`however, Defendants’ construction relies on numerous disclosures and examples in the
`
`specification of the ʼ502 patent that inform the plain and ordinary meaning of the term.
`
`Accordingly, Defendants’ construction is consistent with the approach the Federal Circuit
`
`mandated in Phillips. In contrast, Neodron’s construction ignores the specification and
`
`“improperly restricts the role of the specification in claim construction”—the very approach the
`
`Federal Circuit rejected in Phillips. Phillips, 415 F.3d at 1320-21. Under the Phillips-Kaneka-
`
`PPC Broadband line of cases, the Court should reject Neodron’s contrary dictionary definitions.
`
`The remaining arguments in Neodron’s re