Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 1 of 14
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`NEODRON, LTD.,
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`Plaintiff,
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`v.
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`LENOVO GROUP, LTD., et al.,
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`Case No. 19-cv-05644-SI
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`ORDER RE CLAIM CONTRUCTION
`AND MOTIONS TO STRIKE
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`Re: Dkt. Nos. 72, 80, 81, 82
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`Defendants.
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`On July 1, 2020, the Court heard argument on the parties’ proposed claim constructions.
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`Having considered the arguments of the parties and the papers submitted, the Court construes the
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`disputed terms as follows. Additionally, pursuant to Civil Local Rule 7-1(b) the Court hereby
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`vacates the July 24, 2020, hearing on defendants’ motion to strike; the motion is GRANTED.
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`ISSUE ONE: CLAIM CONSTRUCTION
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`BACKGROUND
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`On September 06, 2019, plaintiff Neodron LTD. (“Neodron”) filed this action pertaining to
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`seven asserted patents: United States Patent Nos. 8,451,237 (“the ’237 patent”); 8,102,286 (“the
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`’286 patent”); 7,821,502 (“the ’502 patent”); 8,502,547 (“the ’547 patent”); 8,946,574 (“the ’574
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`patent”); 9,086,770 (“the ’770 patent”); and 10,088,960 (“the ’960 patent”). Dkt. No. 1 ¶ 1
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`(Complaint). Neodron is the sole owner of the asserted patents. Id. at ¶ 6. The patents generally
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`relate to touchscreen technology. Id. at ¶ 1.
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`According to the complaint, defendants Lenovo Group Ltd., Lenovo Inc., and Motorola
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`Mobility LLC (“defendants”) “make, use, offer for sale, sell, and/or import certain products . . . that
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`directly infringe” Neodron’s patent rights. Dkt. No. 1 at ¶¶ 7-9 (Complaint). Specifically, Neodron
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 2 of 14
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`alleges defendants’ products, such as the Lenovo Yoga 730 and Motorola Moto G6, infringe the
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`’286 Patent and the ’547 Patent. Id. at ¶¶ 17 (Count 1 ’286 patent), 33 (Count 3 ’547 patent).
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`Additionally, Neodron alleges defendants’ products, such as the Lenovo Thinkpad X1 Yoga,
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`infringe the ’237 Patent, the ’574 Patent, the ‘770 Patent, and the ’960 Patent. Id. at ¶¶ 15 (Count 2
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`’237 patent), 41 (Count 4 ’574 patent), 49 (Count 5 ‘770 patent), 57 (Count 6 ’960 patent)1.
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`Defendants deny infringement and claim the patents are invalid. Dkt. Nos. 16 (Lenovo’s Answer),
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`17 (Motorola’s Answer).
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`LEGAL STANDARD
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`Claim construction is a matter of law. Markman v. Westview Instr., Inc., 517 U.S. 370, 372
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`(1996). Terms contained in claims are “generally given their ordinary and customary meaning.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “[T]he ordinary and customary
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`meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the
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`art in question at the time of the invention[.]” Id. at 1313. In determining a claim’s proper
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`construction, a court begins with intrinsic evidence, consisting of the claim language, the patent
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`specification, and, if in evidence, the prosecution history. Id. at 1314; see also Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “The appropriate starting point . . . is
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`always with the language of the asserted claim itself.” Comark Communications, Inc. v. Harris
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`Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); see also Abtox, Inc. v. Exitron Corp., 122 F.3d 1019,
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`1023 (Fed. Cir. 1997).
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`Accordingly, although claims speak to those skilled in the art, claim terms are construed in
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`light of their ordinary and accustomed meaning, unless examination of the specification, prosecution
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`history, and other claims indicates the inventor intended otherwise. See Electro Medical Systems,
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`S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994). The written description can
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`provide guidance as to the claims’ meaning, thereby dictating how to construe claims, even if the
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`1 The Court notes that the complaint and the parties’ claim construction briefing all address
`the patents in different order. For ease of reference, the Court addresses the patents with disputed
`terms first, in numerical order, then addresses the patents argued to be indefinite.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 3 of 14
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`guidance is not provided in explicit definitional format. SciMed Life Systems, Inc. v. Advanced
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`Cardiovascular Systems, Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001). In other words, the
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`specification may define claim terms “by implication” such that the meaning may be “found in or
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`ascertained by a reading of the patent documents.” Vitronics, 90 F.3d at 1582, 1584 n.6.
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`In addition, the claims must be read in view of the specification. Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). This “does not
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`mean that everything expressed in the specification must be read into all the claims.” Raytheon Co.
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`v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). For instance, limitations from a preferred
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`embodiment described in the specification generally should not be read into the claim language. See
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`Comark, 156 F.3d at 1187. However, it is a fundamental rule that “claims must be construed so as
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`to be consistent with the specification[.]” Phillips, 415 F.3d at 1316 (citations omitted). Therefore,
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`if the specification reveals an intentional disclaimer or disavowal of claim scope, the claims must
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`be read consistently with that limitation. Id.
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`Finally, the Court may consider the prosecution history of the patent, if in evidence.
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`Markman, 52 F.3d at 980. The prosecution history limits the interpretation of claim terms to exclude
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`any interpretation that was disclaimed during prosecution. See Southwall Technologies, Inc. v.
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`Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). In most situations, analysis of this intrinsic
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`evidence alone will resolve claim construction disputes. See Vitronics, 90 F.3d at 1583. Courts
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`should not rely on extrinsic evidence in claim construction to contradict the meaning of claims
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`discernable from examination of the claims, the written description, and the prosecution history.
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`See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing
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`Vitronics, 90 F.3d at 1583). However, it is entirely appropriate “for a court to consult trustworthy
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`extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not
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`inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent
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`technical field.” Id. at 1309. Extrinsic evidence “consists of all evidence external to the patent and
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`prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
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`Phillips, 415 F.3d at 1317 (citation omitted). All extrinsic evidence should be evaluated in light of
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`the intrinsic evidence. Id. at 1319.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 4 of 14
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`DISCUSSION
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`Pursuant to Patent Local Rule 4-3(a), parties are required to identify up to ten terms whose
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`construction will be most significant to the resolution of the case. The parties have identified four
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`terms for construction in their joint claim construction statement. Dkt. No. 96 at 4 (Joint Claim
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`Construction). The Court addresses each of the disputed terms in turn.
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`I.
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`’286 Patent - “sensor value”
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`The ‘286 patent, entitled “Capacitive Keyboard with Non-Locking Reduced Keying
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`Ambiguity,” discloses a method and apparatus for preventing accidental false inputs from keys
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`adjacent to a selected key in a capacitive keyboard. Dkt. No. 72-2, Exhibit A (’286 patent); Dkt.
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`No. 73 at 132 (Pltf’s Opening Brief). These arrays of capacitive proximity sensors are often used in
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`keyboards, keypads, and other touch-input apparatus. Dkt. No. 72-2, Exhibit A (’286 patent); Dkt.
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`No. 73 at 13 (Pltf’s Opening Brief). The term “sensor value” appears in independent claims 1, 9,
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`10, and 21 of the ‘286 patent. Dkt. No. 72-2, Exhibit A (’286 patent). Claim 1, which is
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`representative of the other claims, reads:
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`1. A key panel comprising:
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`a plurality of keys; and
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`control logic operatively coupled to the plurality of keys, the control
`logic being configured to detect a sensor value of an inactive key
`surpassing a sensor value of an active key by a select amount and
`assigning the inactive key as the active key, wherein the key
`assignment is biased in favor of the currently active key by increasing
`sensor values of the currently active key.
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`Dkt. No. 72-2, Exhibit A at 8:55-65 (emphasis added) (’286 patent).
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`Plaintiff Neodron
`Plain and ordinary meaning of “measurable
`sensor signal value”
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`Defendants
`Plain and ordinary meaning of “value
`indicating the strength of the sensor signal”
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`2 For ease of reference, all citations to page numbers refer to the ECF branded number in
`the upper right corner of documents.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 5 of 14
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`The Court construes “sensor value” as “measurable sensor signal value” for three
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`reasons.
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`First, “[t]he patentee is free to choose a broad term and expect to obtain the full scope of its
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`plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full
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`scope.” Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012).
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`Defendants argue language limiting the term is necessary because the specification consistently uses
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`the term “signal strength” to characterize the invention. Dkt. No. 75 at 6 (citing GPNE Corp. v.
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`Apple Inc., 830 F.3d 1365, 1370-71 (Fed. Cir. 2016)) (Defs’ Responsive Brief). Unlike GPNE
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`Corp., the ’286 patent does not indicate the patentee had the explicit desire to redefine the term or
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`disavow its full scope. GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016) (the clear
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`desire from the patentee occurred because the disputed term appeared in the specification over 200
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`times). Additionally, unlike GPNE Corp., neither Neodron nor defendants have presented any
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`evidence of the prosecution history indicating the patentee’s explicit desire to redefine the term or
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`disavow the term’s full scope.
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`Second, the specification’s embodiments should not necessarily limit the claims. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). Courts repeatedly warn against confining the
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`claims to the specification’s embodiments because “persons of ordinary skill in the art rarely would
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`confine their definitions of terms to the exact representations depicted in the embodiments.” Phillips
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`v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). In this case, the specification indicates a
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`preferred embodiment, but this preference should not limit the claim language. KCJ Corp. v. Kinetic
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`Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (quoting Electro Med. Sys., S.A. v. Cooper
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`Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994)).
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`Third, defendants argue the ’286 patent’s context justifies the claim limitation. Dkt. No. 75
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`at 7 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091, 1097 (Fed. Cir. 2020))
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`(Defs’ Responsive Brief). The Court disagrees. In McRO, Inc., no dispute existed with the
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`mathematical definition of a vector. A vector is “represented by a three-term sequence (ax, ay, az),
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`each term for one of the three spatial dimensions.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
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`959 F.3d 1091, 1097 (Fed. Cir. 2020). Here, the sensor value can represent “unclaimed processing
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 6 of 14
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`steps . . . including any processing, amplification, thresholding, smoothing, noise reduction, whether
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`it is that’s done in the process of comparing the values to determine which key is pressed.” Dkt. No.
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`73 at 29 (internal quotations omitted) (quoting Dkt. No. 74-13 at 6, Exhibit 13 (ALJ Markman
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`hearing)) (Pltf’s Opening Brief). Limiting the term would not afford the patentee its full scope.
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`’502 Patent – (A) “sensing area” and (B) “wherein row sensing electrodes of sensing
`II.
`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”
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`The ’502 patent, entitled “Two-Dimensional Position Sensor,” discloses a capacitive
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`position sensor for determining the position of an object within a two-dimensional sensing area.
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`Dkt. No. 72-13, Exhibit L (’502 patent); Dkt. No. 73 at 7 (Pltf’s Opening Brief). This capacitive
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`position sensor can be used in objects such as a touchpad or a touchscreen. Dkt. No. 72-13, Exhibit
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`L (’502 patent); Dkt. No. 73 at 7 (Pltf’s Opening Brief). Claim 1 reads:
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`1. A position sensor comprising:
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`a substrate having a surface with an arrangement of electrodes mounted thereon,
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`wherein the electrodes define an array of sensing cells arranged in columns and rows
`to form a capacitive sensing area of the sensor, each sensing cell including a column
`sensing electrode and a row sensing electrode, the column sensing electrodes of
`sensing cells in the same column being electrically coupled together and the row
`sensing electrodes of sensing cells in the same row being electrically coupled
`together, and
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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.
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`Dkt. No. 72-13, Exhibit L at 12:11-27 (emphasis added) (’502 patent).
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`A.
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`“sensing area”
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`Plaintiff Neodron
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`Plain and ordinary meaning of “an area defined
`by the sensing cells”
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`Defendants
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`Plain and ordinary meaning of “an area defined
`by the sensing electrodes”
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`The Court construes “sensing area” as “an area defined by the sensing cells.”.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 7 of 14
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`Construing the term “sensing area” as “an area defined by the sensing electrodes” renders
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`the use of sensing cells superfluous and this interpretation is disfavored. SimpleAir, Inc. v. Sony
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`Ericsson Mobile Commc'ns AB, 820 F.3d 419, 429 (Fed. Cir. 2016) (citing Power Mosfet Techs.,
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`L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004)). Specifically, the contextual claim
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`language indicates the sensing area depends on the sensing cells. Dkt. No. 72-13, Exhibit L at 2:45-
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`55. The sensing cells are formed by row and column electrodes. Id. In order for sensing cells to
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`be meaningfully different from the sensing area they cannot be identically defined.
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`B.
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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”
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`Plaintiff Neodron
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`Defendants
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`Plain and ordinary meaning of:
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`Plain and ordinary meaning of:
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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
`connections that wrap around the respective
`row and are made outside the sensing area”
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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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
`connections that wrap around other electrodes
`in the row and are made outside the sensing
`area”
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`The Court construes the term in accordance with the plain and ordinary meaning of
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`“wherein row sensing electrodes of sensing cells at opposing ends of at least one of the rows are
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`electrically coupled to one another by connections that wrap around the respective row and are
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`made outside the sensing area.” This construction naturally aligns with the patent’s description.
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`“The construction that stays true to the claim language and most naturally aligns with the
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`patent’s description of the invention will be, in the end, the correct construction.” SimpleAir, Inc.
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`v. Sony Ericsson Mobile Commc'ns AB, 820 F.3d 419, 429–30 (Fed. Cir. 2016). In this case, the
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`term’s use of the word “wrap-around” informs a POSITA that the connection must run from one
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 8 of 14
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`vertical side of the sensing area to another vertical side of the sensing area. The language indicates
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`the “wrap-around” connection cannot run from the vertical side of the sensing area to a horizontal
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`side of the sensing area because the connection would not curve around the respective row. The
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`“wrap-around” connection would not circumscribe most of the respective row’s sides. For example,
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`a connection running between the sensing area’s vertical side to the horizontal side would only curve
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`around a part of the respective row and would not “wrap-around” the respective row.
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`III.
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`’770 Patent - “generally straight line”
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`The ‘770 patent entitled, “Touch Sensor with High-Density Macro-Feature Design,”
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`discloses designs for a touch sensor which may detect the presence and location of a touch or the
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`proximity of an object (such as a user's finger or a stylus) within a touch-sensitive area of the touch
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`sensor overlaid on a display screen. Dkt. No. 72-12, Exhibit K (’770 patent); Dkt. No. 73 at 11
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`(Pltf’s Opening Brief). The term “generally straight line” appears in independent claim 1 and 7 of
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`the ’770 patent. Claim 7, which is representative of the other claims, reads:
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`7. A touch position-sensing panel comprising:
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`a sensing area comprising:
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` a
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` substrate; . . .
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`the second layer having a second plurality of gaps formed in the mesh,
`at least one of the plurality of second electrodes separated from an
`adjacent electrode of the plurality of second electrodes by a gap of the
`second plurality of gaps, the gap of the second plurality of gaps
`separating the at least one electrode of the plurality of second
`electrodes and the adjacent electrode of the plurality of second
`electrodes from one side of the sensing area to an opposing side of the
`sensing area;
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`wherein the plurality of first electrodes and the plurality of second
`electrodes overlap to create a plurality of nodes;
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`wherein each of the first plurality of gaps and each of the second
`plurality of gaps runs in a generally straight line from one side of
`the sensing area to an opposing side of the sensing area and has a
`width greater than or equal to 5 micrometers and less than 20
`micrometers, . . . .
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`Dkt. No. 72-12, Exhibit K at 14:10-67 (emphasis added) (’770 patent).
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 9 of 14
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`Plaintiff Neodron
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`Plain and ordinary meaning;
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`Defendants
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`Indefinite
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`No construction necessary
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`Dkt. No. 96 at 4 (Joint Claim Construction).
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`The parties dispute whether the term “generally straight line” is indefinite for failing to
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`comply with 35 U.S.C. § 112. Dkt. No. 96 (Joint Claim Construction). The Court finds the term
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`is not indefinite. Defendants have not overcome the patent’s statutory validity presumption with
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`clear and convincing evidence.
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`Patents are statutorily presumed valid and “any facts supporting a holding of invalidity must
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`be proved by clear and convincing evidence.” Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376
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`(Fed. Cir. 2001). Here, defendants have not overcome the patent’s statutory validity presumption.
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`Defendants state “generally straight line” renders the patent indefinite “because there is no common
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`understanding among those of ordinary skill in the art about what a ‘generally straight line’ is
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`relative to the distinguished art, and the patent does not define one.” Dkt. No. 72 at 19 (Defs’
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`Opening Brief). Defendants argue “generally straight line” is a term of degree, and claims reciting
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`terms of degree are indefinite if they fail to provide objective boundaries for POSITAs when read
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`in light of the specification. Dkt. No. 72 at 19-20 (citing Liberty Ammunition, Inc. v. United States,
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`835 F.3d 1388, 1395-96 (Fed. Cir. 2016)) (Defs’ Opening Brief). Specifically, defendants state the
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`specification does not provide “any objective indication for determining whether any specific shape,
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`threshold, or other characteristics is required for an electrode gap to run in a ‘generally straight
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`line.’” Dkt. No. 72 at 21-22 (Defs’ Opening Brief). Furthermore, defendants claim “[a] POSITA
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`would understand that even small variations matter when the gaps are only micrometers across.
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`[citation]. At this size, small differences have large impacts on the nature of the electrodes, which
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`impacts performance. [citation].” Dkt. No. 72 at 21-22 (citing Dkt. No. 72-3, Exhibit B at ¶¶ 36-37
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`(Silzars Dec.)) (Defs’ Opening Brief).
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`But, courts “have rejected the proposition that claims involving terms of degree are
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`inherently indefinite.” Sonix Tech. Co. v. Publications Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 10 of 14
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`2017) (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014)). “[A]
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`patentee need not define his invention with mathematical precision in order to comply with the
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`definiteness requirement.” Sonix Tech. Co. v. Publications Int'l, Ltd., 844 F.3d 1370, 1377 (Fed.
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`Cir. 2017) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005)).
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`As Neodron states, the term “generally straight line” does not need to be mathematically precise as
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`it “encompasses some imprecision from a perfectly or exactly straight line, which is appropriate and
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`acceptable to a POSITA.” Dkt. No. 73 at 27 (citing Dkt. No. 74-1, Exhibit 1 ¶¶ 74-75 (Richard A.
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`Flasck Dec.)) (Pltf’s Opening Brief).
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`Defendants rely on Intel Corp. v. Tela Innovations, Inc. when making their term of degrees
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`argument. Dkt. No. 72 at 20 (citing No. 3:18-CV-02848-WHO, 2019 WL 5697922 (N.D. Cal. Nov.
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`4, 2019)) (Defs’ Opening Brief). Defendants argue Intel is instructive because “Intel observed that,
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`although the intrinsic evidence reveals where line end spacing is located and why minimum size is
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`desirable, it provided no objective way to determine what minimum size means.” Dkt. No. 72 at 20
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`(emphasis in original) (citing Intel Corp. v. Tela Innovations, Inc., No. 3:18-CV-02848-WHO, 2019
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`WL 5697922, at *12 (N.D. Cal. Nov. 4, 2019)). Neodron distinguishes Intel, arguing that the Intel
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`dispute related to extreme precision and required a microscopic integrated circuit to be “physically
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`and electrically separated by a line end spacing of minimum size.” Dkt. No. 76 at 19 (emphasis in
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`original) (citing Intel Corp. v. Tela Innovations, Inc., No. 3:18-CV-02848-WHO, 2019 WL
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`5697922, at *11 (N.D. Cal. Nov. 4, 2019)) (Pltf’s Responsive Brief). Here, the ’770 patent relates
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`to gaps ranging from 5 to 20 micrometers while Intel concerned nanoscale technology. Dkt. No.
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`72-12, Exhibit K at 14:20-25 (‘770 patent claim 1); No. 3:18-CV-02848-WHO, 2019 WL 2476620,
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`at *12 (N.D. Cal. June 13, 2019). The difference between micrometers and nanometers is key, as
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`Neodron’s expert states: “[a] POSITA would by no means understand that a mesh pattern formed
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`of 5 to 20 micron gaps would necessarily have those gaps running in mathematically perfect straight
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`lines (or in any other mathematically precise shape).” Dkt. No. 74-1, Exhibit 1 ¶ 77 (Flasck Dec.)).
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`Moreover, “a POSITA [would not] find any inconsistency between the [‘770]3 patent claims’
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`3 There was likely a typographical error where “502” was used, but the ‘502 patent does
`not mention these types of gaps.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 11 of 14
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`
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`requirement of small 5 to 20 micron gaps . . . and the requirement that those gaps run only in a
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`generally straight line . . . .” Dkt. No. 74-1, Exhibit 1 ¶ 77 (Flasck Dec.)).
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`Further, the Anchor Wall4 court found the word “generally” acts as a descriptive term
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`“commonly used in patent claims to avoid a strict numerical boundary.” Anchor Wall Sys., Inc. v.
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`Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310–11 (Fed. Cir. 2003) (internal quotations
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`omitted) (citing Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001)). Also, the
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`patent’s specification expressly explains approaches using language like “generally quadrilateral,”
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`“generally rectangular,” and “generally parallel.” Dkt. No. 72-12, Exhibit K at 6:50-55, 9:5-10 (’770
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`patent). As Neodron’s expert indicates, the ’770 patent’s figure 4, which discloses electrodes that
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`are “generally quadrilateral,” would inform a POSITA what constitutes a design where gaps run in
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`a “generally straight line.” Dkt. No. 74-1, Exhibit 1 ¶ 75 (Flasck Dec.)). Thus, the specification’s
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`use of “generally quadrilateral,” “generally rectangular,” and “generally parallel” would inform,
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`with reasonable certainty, those skilled in the art about the scope of the term.
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`Defendants state they “offer ample evidence and the ’770 Patent provides no relevant
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`context.” Dkt. No. 75 at 14 (citing Dkt. No. 72-3, Exhibit B ¶¶ 35-40 (Silzars Dec.)) (Defs’
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`Responsive Brief). However, the defendants’ evidence does not meet the clear and convincing
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`threshold to overcome the statutory presumption of validity and the requirement that a patentee need
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`not define their invention with mathematical certainty. Ultimately, the specification use of
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`“generally quadrilateral,” “generally rectangular,” and “generally parallel” and the macroscopic
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`view would inform, with reasonable certainty, those skilled in the art about the scope of the term.
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`Thus, the term “generally straight line” will maintain its plain and ordinary meaning.
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` 4
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` Defendants attempt to distinguish Anchor Wall arguing it does not address indefiniteness.
`Dkt. No. 75 at 13 (Defendants’ Responsive Brief). However, courts addressing indefiniteness cite
`Anchor Wall for claim constructions disputing the term “generally.” See generally Advanced
`Aerospace Techs., Inc. v. United States, 124 Fed. Cl. 282, 306 (2015) (finding the terms “generally
`vertical” and “generally perpendicular” not indefinite); Edgewell Pers. Care Brands, LLC v. Albaad
`Massuot Yitzhak, Ltd., No. CV 15-1188-RGA, 2017 WL 1900736, at *2 (D. Del. May 9, 2017)
`(Finding the term “generally tailor” not indefinite).
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 12 of 14
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`ISSUE TWO: DEFENDANTS’ MOTION TO STRIKE
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`BACKGROUND
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`On April 17, 2020, pursuant to the agreed upon schedule, the parties exchanged their expert
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`witnesses’ declarations. Dkt. Nos. 82-3, Exhibit 1 (Neodron’s Email Service), 82-4, Exhibit 2
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`(Defendants’ Email Service). On May 15, 2020, Neodron timely served its first supplemental
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`declaration on defendants. Dkt. No. 82-5, Exhibit 3 (Neodron’s First Supplemental Declaration
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`Email Service). Later, Neodron filed its responsive claim construction brief as well as the second
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`supplemental declaration. Dkt. No. 76 (Pltf’s Responsive Brief); Dkt. No. 77-2, Exhibit 21 (Second
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`Supplemental Declaration) (Filed: June 5, 2020). Defendants state Neodron “did not provide notice
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`. . . that it would submit the Second Supplemental Flasck Declaration, nor did it seek leave of this
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`Court to file it.” Dkt. No. 82 at 7 (Motion to Strike).
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`On June 16, 2020, defendants moved the Court to strike plaintiff the second supplemental
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`Flasck declaration and portions of Neodron’s responsive brief citing thereto. Dkt. No. 82 (Motion
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`to Strike) (Dkt. No. 76 (Pltf’s Responsive Brief); Dkt. No. 77-2, Exhibit 21 (Richard A. Flasck
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`Supplemental Dec.)). Specifically, defendants state the second supplemental declaration was
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`“untimely and highly prejudicial.” Dkt. No. 82 at 5 (Motion to Strike).
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`Neodron argues the second supplemental Flasck declaration is proper because, by arguing
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`the “generally straight line” term is indefinite, defendants have converted a claim construction issue
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`into a summary judgment motion: “the declaration [defendants] seek to strike is exclusively
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`responsive to [defendants’] motion for summary judgment.” Id. at 2. Plaintiff argues the
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`supplemental declaration is proper because “it does not concern all the garden-variety claim
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`construction disputes before this Court” rather “it solely concerned [d]efendants’ summary
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`judgment arguments for invalidity based on indefiniteness [for the ‘generally straight line’ term].”
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`Id. Neodron argues the inclusion of the second supplemental declaration is harmless and permitted
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`under FRCP 37. Id. at 4 (Disclosures allowed if they are “substantially justified or harmless”).
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`Additionally, Neodron argues striking lines from their brief is improper because “[the brief lines]
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`do not solely rely on Flasck’s Second declaration and, in some cases, plainly do not rely on that
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`declaration at all.” Id. at 7-8.
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`Case 3:19-cv-05644-SI Document 97 Filed 07/13/20 Page 13 of 14
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`LEGAL STANDARD
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`The Northern District of California's “Local Rules exist to further the goal of full, timely
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`discovery and provide all parties with adequate notice and information with which to litigate their
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`cases, not to create supposed loopholes through which parties may practice litigation by ambush.”
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`IXYS Corp. v. Advanced Power Tech., Inc., No. C 02-03942 MHP, 2004 WL 1368860, at *3 (N.D.
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`Cal. June 16, 2004). “The rules are designed to require parties to crystallize their theories of the
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`case early in the litigation and to adhere to those theories once they have been disclosed.” O2 Micro
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`Int'l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1366 & n.12 (Fed. Cir. 2006) (“The rules . . .
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`seek to balance the right to develop new information in discovery with the need f