Edward J. DeFranco (No. 165596)
`eddefranco@quinnemanuel.com
`Joseph Milowic III (pro hac vice)
`josephmilowic@quinnemanuel.com
`51 Madison Ave., 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`
`
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Kevin P.B. Johnson (No. 177129)
`kevinjohnson@quinnemanuel.com
`Brice C. Lynch (No. 288567)
`bricelynch@quinnemanuel.com
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, California 94065
`Telephone: (650) 801-5000
`Facsimile: (650) 801-5100
`
`Attorneys for Plaintiff and Counter-
`Defendant Memjet Technology Limited and
`Third-Party Defendants Memjet Holdings Ltd.,
`Memjet US Services Inc., and Memjet Ltd.
`
`
`MEMJET TECHNOLOGY LIMITED,
`
`Plaintiff,
`
`vs.
`
`HEWLETT-PACKARD COMPANY,
`
`Defendant.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No. 3:15-cv-01769-BEN-BLM
`
`PLAINTIFF AND COUNTER-
`DEFENDANT MEMJET
`TECHNOLOGY LIMITED AND
`THIRD-PARTY DEFENDANTS
`MEMJET LTD., MEMJET US
`SERVICES INC., AND MEMJET
`HOLDINGS LTD.’S JOINT
`PATENT LOCAL RULE 4.1
`PRELIMINARY RESPONSIVE
`CLAIM CONSTRUCTIONS AND
`PRELIMINARY IDENTIFICATION
`OF EXTRINSIC EVIDENCE
`
`
`
`HEWLETT-PACKARD COMPANY,
`
`Counter-Claimant,
`
`vs.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Counter-Defendant.
`
`HEWLETT-PACKARD COMPANY,
`
`Third-Party Plaintiff,
`
`vs.
`
`MEMJET LTD., MEMJET US
`SERVICES INC., and MEMJET
`HOLDINGS LTD.
`
`
`Third-Party Defendants.
`
`
`
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`HP 1011
`Page 1 of 55
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`

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`
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`Pursuant to the Court’s December 1, 2015 Case Management Conference
`
`Order Regulating Discovery and Other Pretrial Proceedings (ECF No. 42), Plaintiff
`
`and Counter-Defendant Memjet Technology Limited and Third-Party Defendants
`
`Memjet Ltd., Memjet US Services Inc., and Memjet Holdings Ltd. (collectively
`
`“Memjet”), by and through their undersigned counsel, hereby provide to Hewlett-
`
`Packard Company (now “HP Inc.”) (“HP”) their Patent Local Rule 4.1 Preliminary
`
`Responsive Claim Constructions and Preliminary Identification of Extrinsic
`
`Evidence. Memjet’s positions are contained in this responsive disclosure as well as
`
`in their Preliminary Proposed Claim Constructions and Preliminary Identification of
`
`Extrinsic Evidence, which is hereby incorporated by reference in its entirety.
`
`These proposed disclosures are provided for the purpose of guiding the
`
`parties’ meet and confer process, permitting the parties to identify terms for which
`
`the parties are capable of reaching an agreement on proposed constructions, and
`
`clarifying the issues in the cases. Consistent with this purpose, Memjet reserves the
`
`right to amend, supplement, revise, and otherwise finalize its constructions or
`
`identification of extrinsic evidence, as contemplated by the Patent Local Rules and
`
`applicable agreement between the parties. Memjet reserves the right to rely on
`
`evidence cited regarding the construction of one claim term as evidence to support
`
`the construction of any other claim term. Memjet provides specific citations to
`
`extrinsic material, but those citations are exemplary and Memjet reserves the right to
`
`rely upon the entirety of the identified extrinsic material. Memjet reserves the right
`
`to rely on any extrinsic evidence identified by HP in its Preliminary Claim
`
`Constructions and Preliminary Responsive Claim Constructions and the right to add
`
`additional extrinsic evidence to rebut any evidence raised by HP in its concurrent
`
`exchange. Finally, by offering a proposed construction for the following claim
`
`terms, Memjet is not conceding that the claim terms satisfy the various requirements
`
`of 35 U.S.C. § 112, and Memjet reserves the right to contest the validity of the
`
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`HP 1011
`Page 2 of 55
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`

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`asserted claims and patents on the basis of lack of written description, lack of
`
`
`
`
`enablement, and/or indefiniteness.
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`HP 1011
`Page 3 of 55
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`

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`
`
`
`PATENTS-IN-SUIT
`
`U.S. Patent No. 6,575,549 (the “’549 patent”)
`
`U.S. Patent No. 6,880,914 (the “’914 patent”)
`
`U.S. Patent No. 7,156,492 (the “’492 patent”)
`
`Memjet Technology Ltd.’s
`
`U.S. Patent No. 7,325,986 (the “’986 patent”)
`
`Asserted Patents
`
`U.S. Patent No. 8,662,636 (the “’636 patent”)
`
`U.S. Patent No. 8,678,550 (the “’550 patent”)
`
`U.S. Patent No. 8,696,096 (the “’096 patent”)
`
`U.S. Patent No. 9,056,475 (the “’475 patent”)
`
`U.S. Patent No. 6,250,738 (the “’738 patent”)
`
`U.S. Patent No. 6,322,206 (the “’206 patent”)
`
`U.S. Patent No. 6,679,596 (the “’596 patent”)
`
`HP’s Asserted Patents
`
`U.S. Patent No. 6,789,878 (the “’878 patent”)
`
`U.S. Patent No. 6,491,377 (the “’377 patent”)
`
`U.S. Patent No. 7,399,069 (the “’069 patent”)
`
`U.S. Patent No. 7,726,786 (the “’786 patent”)
`
`
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`3
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`HP 1011
`Page 4 of 55
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`

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`
`
`MEMJET TECHNOLOGY LIMITED’S ASSERTED PATENTS
`
`
`
`
`U.S. Patent No. 6,575,549 (the “’549 patent”)
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Limiting
`
`Not limiting
`
`
`
`No construction
`needed as
`preamble is not a
`claim limitation.
`
`Alternatively:
`
`Plain and
`ordinary
`meaning
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Plain and
`ordinary
`meaning
`
`
`
`4
`
`Indefinite
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`“the two
`dimensional
`coordinates of the
`position or
`positions on the
`page where a dot of
`ink failed to print
`correctly”
`
`Extrinsic Evidence
`Prosecution history
`of EP1303410.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`
`Claim Term
`
`Preamble of
`Claim 1
`
`“correctly”
`(claims 1, 11)
`
`“location or
`locations”
`(claims 1, 5, 6,
`8, 10)
`
`
`
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`11
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`HP 1011
`Page 5 of 55
`
`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`“data
`representing
`anything to be
`printed, such as
`text and line
`drawings”
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Plain and
`ordinary
`meaning
`
`
`
`“an image”/
`“the image”
`(claims 1, 6, 7)
`
`“transversely”
`(claim 2)
`
`extrinsic record.
`
`“the image input
`into the digital
`printing device to
`be printed”
`
`Extrinsic Evidence
`Prosecution history
`of EP1303410.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`Indefinite
`
`Extrinsic Evidence
`Prosecution history
`of EP1303410.
`
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`“influenced by”
`(claim 5)
`
`Indefinite
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`
`Plain and
`ordinary
`meaning
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`
`5
`
`
`
`
`
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`HP 1011
`Page 6 of 55
`
`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Plain and
`ordinary
`meaning
`
`
`
`Plain and
`ordinary
`meaning
`
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`“wherein the
`shifted location
`is immediately
`adjacent,
`transversely or
`longitudinally
`or both, to the
`original
`location” (claim
`8)
`
`“additional ink .
`. . in the form of
`extra drops of
`ink” (claim 10)
`
`Preamble of
`claim 11
`
`Limiting
`
`Not limiting
`
`
`
`6
`
`
`
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`HP 1011
`Page 7 of 55
`
`

`
`
`
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Indefinite - Element
`governed by 35
`USC 112, ¶ 6, but
`there is no
`corresponding
`structure in the
`specification to
`perform the
`function of moving
`the substrate
`relative to said row
`of devices in a
`direction generally
`perpendicular to
`said row of dots.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation is
`governed by 35
`USC 112, ¶ 6, and
`there is no or
`insufficient
`disclosure of
`structure, material,
`or acts for
`performing the
`entire claimed
`function in the
`specification and/or
`any supporting
`disclosure is not
`clearly linked to or
`associated with the
`claimed function.
`
`“adjacent devices in
`a line”
`
`Extrinsic Evidence
`Am. Heritage
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Function: “To
`move the
`substrate relative
`to said row of
`devices in a
`direction
`generally
`perpendicular to
`said row of dots”
`
`Structure:
`“Digital printing
`device, ink
`ejection device,
`page width
`printer, laser or
`LED type printer
`that passes paper
`underneath its
`printhead”
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`
`Plain and
`ordinary
`meaning
`
`7
`
`Claim Term
`
`“means to move
`the substrate
`relative to said
`row of devices
`in a direction
`generally
`perpendicular to
`said row of
`dots” (claim 11)
`
`“row of
`devices” (claim
`11)
`
`
`
`
`
`
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`
`11
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`12
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`13
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`14
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`HP 1011
`Page 8 of 55
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`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Function: “To
`determine if one
`or more of said
`devices is not
`operating
`correctly”
`
`Structure:
`“Diagnostic
`systems of the
`printer that are
`well understood
`by those skilled
`in the art”
`
`“means to
`determine if one
`or more of said
`devices is not
`operating
`correctly”
`(claim 11)
`
`College Dictionary
`(4th ed. 2002) at
`1211-12.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`Indefinite - Element
`governed by 35
`USC 112, ¶ 6, but
`there is no
`corresponding
`structure in the
`specification to
`perform the
`function of
`determining if one
`or more of said
`devices is not
`operating correctly.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation is
`governed by 35
`USC 112, ¶ 6, and
`there is no or
`insufficient
`disclosure of
`structure, material,
`or acts for
`performing the
`entire claimed
`function in the
`specification and/or
`
`8
`
`
`
`
`
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`HP 1011
`Page 9 of 55
`
`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`“control means
`to analyse
`images to be
`printed and to
`identify when a
`dot of ink
`should be
`printed by
`activation of the
`failed device
`and to shift the
`position of the
`dot in the
`printed image
`such that the dot
`is printed by
`activation of
`one of the
`devices on
`either side of
`the failed
`device” (claim
`11)
`
`any supporting
`disclosure is not
`clearly linked to or
`associated with the
`claimed function.
`
`Indefinite - Element
`governed by 35
`USC 112, ¶ 6, but
`there is no
`corresponding
`structure in the
`specification to
`perform the
`function of
`analyzing images to
`be printed and
`identifying when a
`dot of ink should be
`printed by
`activation of the
`failed device and
`shifting the position
`of the dot in the
`printed image such
`that the dot is
`printed by
`activation of one of
`the devices on
`either side of the
`failed device.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation is
`governed by 35
`USC 112, ¶ 6, and
`there is no or
`insufficient
`disclosure of
`structure, material,
`
`Function: “To
`analyze images
`to be printed and
`to identify when
`a dot of ink
`should be printed
`by activation of
`the failed device
`and to shift the
`position of the
`dot in the printed
`image such that
`the dot is printed
`by activation of
`one of the
`devices on either
`side of the failed
`device”
`
`Structure:
`“Diagnostic
`systems of the
`printer that are
`well understood
`by those skilled
`in the art and
`control systems
`programmed
`according to the
`algorithms set
`forth in the
`specification at,
`e.g., 3:7 – 4:11.”
`
`9
`
`
`
`
`
`
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`
`11
`
`12
`
`13
`
`14
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`15
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`16
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`17
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`18
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`19
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`20
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`HP 1011
`Page 10 of 55
`
`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`“anything
`printed, such as
`text and line
`drawings”
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Function: “To
`determine if
`either of the
`adjacent devices
`is required to
`print a dot in the
`same row as the
`original location
`and if neither is
`already required,
`activates one of
`the adjacent
`devices to print
`the dot in the
`same row as the
`original
`
`10
`
`or acts for
`performing the
`entire claimed
`function in the
`specification and/or
`any supporting
`disclosure is not
`clearly linked to or
`associated with the
`claimed function.
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite – lacks
`antecedent basis.
`Indefinite - Element
`governed by 35
`USC 112, ¶ 6, but
`there is no
`corresponding
`structure in the
`specification to
`perform the
`function of
`determining if
`either of the
`adjacent devices is
`required to print a
`dot in the same row
`
`“the printed
`image” (claim
`11)
`
`“the control
`means
`determines if
`either of the
`adjacent devices
`is required to
`print a dot in
`the same row as
`the original
`location and if
`neither is
`already
`required,
`activates one of
`the adjacent
`devices to print
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 11 of 55
`
`

`
`
`
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`location.”
`
`Structure:
`“Control systems
`programmed
`according to the
`algorithms set
`forth in the
`specification at,
`e.g., 3:7 – 4:11.”
`
`as the original
`location and if
`neither is already
`required, activates
`one of the adjacent
`devices to print the
`dot in the same row
`as the original
`location.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Expert testimony
`that the claim
`limitation is
`governed by 35
`USC 112, ¶ 6, and
`there is no or
`insufficient
`disclosure of
`structure, material,
`or acts for
`performing the
`entire claimed
`function in the
`specification and/or
`any supporting
`disclosure is not
`clearly linked to or
`associated with the
`claimed function.
`
`11
`
`Claim Term
`
`the dot in the
`same row as the
`original
`location” (claim
`12)
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 12 of 55
`
`

`
`
`
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Plain and
`ordinary
`meaning
`
`
`
`Plain and
`ordinary
`meaning
`
`
`
`Plain and
`ordinary
`meaning
`
`12
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`
`Claim Term
`
`“the adjacent
`devices” (claim
`12)
`
`“the same row”
`(claim 12)
`
`“the original
`location” (claim
`12)
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 13 of 55
`
`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`“the control
`means only
`activates
`devices
`immediately
`adjacent the
`respective failed
`device to print
`dots originally
`intended to be
`printed by
`activation of the
`failed device”
`(claim 15)
`
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite - Element
`governed by 35
`USC 112, ¶ 6, but
`there is no
`corresponding
`structure in the
`specification to
`perform the
`function of only
`activating devices
`immediately
`adjacent the
`respective failed
`device to print dots
`originally intended
`to be printed by
`activation of the
`failed device.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation is
`governed by 35
`USC 112, ¶ 6, and
`there is no or
`insufficient
`disclosure of
`structure, material,
`or acts for
`performing the
`entire claimed
`function in the
`specification and/or
`any supporting
`disclosure is not
`clearly linked to or
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Function: “To
`only activate
`devices
`immediately
`adjacent the
`respective failed
`device to print
`dots originally
`intended to be
`printed by
`activation of the
`failed device.”
`
`Structure:
`“Control systems
`programmed
`according to the
`algorithms set
`forth in the
`specification at,
`e.g., 3:7 – 4:11.”
`
`13
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 14 of 55
`
`

`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain its
`meaning to one of
`ordinary skill in the
`art at the time of the
`
`Plain and
`ordinary
`meaning
`
`
`
`Plain and
`ordinary
`meaning
`
`
`
`Plain and
`ordinary
`meaning
`
`14
`
`associated with the
`claimed function.
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Indefinite – lacks
`antecedent basis.
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`
`“said selected
`adjacent
`device” (claim
`20)
`
`“the other
`devices” (claim
`20)
`
`“said rows”
`(claim 20)
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 15 of 55
`
`

`
`
`
`
`
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`Memjet’s Extrinsic
`Evidence
`
`invention.
`
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`Memjet’s
`Extrinsic Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`The Random House
`Dictionary of the
`English Language
`(1987)
`(“printhead”)
`
`McGraw-Hill
`Dictionary of
`Scientific and
`Technical Terms,
`5th Edition (1994)
`(“chip”)
`
`Comprehensive
`Dictionary of
`Electrical
`Engineering (1999)
`(“chip”)
`
`U.S. Patent No. 6,880,914 (the “’914 patent”)
`
`Claim Term
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`“integrated circuit
`with printing
`elements”
`
`
`
`“elements that use
`moving parts to
`eject ink”
`
`Extrinsic Evidence
`
`U.S. Patent No.
`6,443,555
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`“printhead
`chip”
`
`
`
`
`15
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 16 of 55
`
`

`
`
`U.S. Patent No.
`5,044,796, e.g.,
`1:18-19
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`The Random House
`Dictionary of the
`English Language
`(1987) (“mount”)
`
`The Random House
`Dictionary of the
`English Language
`(1987)
`(“mounting”)
`
`Merriam-Webster’s
`Collegiate
`Dictionary, Tenth
`Edition (1994)
`(“mount”)
`
`Merriam-Webster’s
`Collegiate
`Dictionary, Tenth
`
`
`
`
`“attached to or
`fixed on”
`
`
`
`16
`
`“mounted on”
`
`“fixed securely on”
`
`Extrinsic Evidence
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`Am. Heritage
`College Dictionary
`(3d Ed. 1997) at
`891; Ninth New
`Collegiate
`Dictionary
`(Merriam-Webster
`Inc. 1988) at 775.
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 17 of 55
`
`

`
`Edition (1994)
`(“mounting”)
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`Comprehensive
`Dictionary of
`Electrical
`Engineering (1999)
`(“printed circuit
`board (PCB)”)
`
`U.S. Patent No.
`4,197,586, e.g.,
`3:38-55
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`The Random House
`Dictionary of the
`English Language
`(1987) (“extend”)
`
`Merriam-Webster’s
`Collegiate
`Dictionary, Tenth
`Edition (1994)
`
`
`
`
`“a flexible substrate
`comprising
`conductors useful
`for connecting
`electronic
`components”
`
`
`
`“arranged in the
`direction from one
`side of the printing
`zone to the other”
`
`
`
`17
`
`“a flexible substrate
`comprising
`capacitors,
`resistors, or other
`electronic
`components”
`
`Extrinsic Evidence
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`“extending the full
`width of the
`printing zone”
`
`Extrinsic Evidence
`Computer Science
`and
`Communications
`Dictionary, Volume
`II (Kluwer
`Academic
`Publishers 2000) at
`1329.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`
`“flexible printed
`circuit board”
`
`“extend across
`the printing
`zone”
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 18 of 55
`
`

`
`(“across”)
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`Merriam-Webster’s
`Collegiate
`Dictionary, Tenth
`Edition (1994)
`(“suitable”)
`
`Webster’s II New
`College Dictionary
`(2001) (“suitable”)
`
`
`
`Memjet’s
`Extrinsic Evidence
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`The Random House
`Dictionary of the
`English Language
`
`
`
`
`Plain and ordinary
`meaning
`
`
`
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`Indefinite
`
`Extrinsic Evidence
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`
`
`“suitable”
`
`U.S. Patent No. 7,156,492 (the “’492 patent”)
`
`HP’s Proposed
`Construction and
`Extrinsic Evidence
`
`Memjet’s
`Proposed
`Construction
`
`“a structure longer
`than it is wide
`designed to carry
`another structure”
`
`
`
`18
`
`“a long and thin
`support
`structure, having a
`floor and
`one or more side
`walls”
`
`Alternatively:
`Indefinite.
`
`Extrinsic Evidence
`
`Random House
`
`Claim Term
`
`“an elongate
`carrier” (claim
`1)
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 19 of 55
`
`

`
`(1987) (“carrier”)
`
`Merriam-Webster’s
`Collegiate
`Dictionary, Tenth
`Edition (1994)
`(“carrier”)
`
`
`
`
`
`
`“a metal alloy
`structure longer
`than it is wide
`designed to carry
`another structure”
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`19
`
`Webster's
`Unabridged
`Dictionary (2d ed.
`2001) at 633; Am.
`Heritage College
`Dictionary (3d ed.
`1997) at 447; Ninth
`New Collegiate
`Dictionary
`(Merriam-Webster
`Inc. 1988) at 404.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`“a long and thin
`support structure,
`having a floor and
`one or more side
`walls, of a metal
`having thermal
`expansion
`properties that are
`similar to thermal
`expansion
`properties of
`silicon”
`
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`“an elongate
`carrier of a
`metal alloy”
`(claim 1)
`
`HP 1011
`Page 20 of 55
`
`

`
`
`
`
`Alternatively:
`Indefinite.
`
`Extrinsic Evidence
`
`Random House
`Webster's
`Unabridged
`Dictionary (2d ed.
`2001) at 633; Am.
`Heritage College
`Dictionary (3d ed.
`1997) at 447; Ninth
`New Collegiate
`Dictionary
`(Merriam-Webster
`Inc. 1988) at 404.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`Expert testimony
`that the claim
`limitation, when
`read in light of the
`intrinsic evidence,
`fails to inform, with
`reasonable
`certainty, those
`skilled in the art
`about the scope of
`the invention.
`
`“that can each
`transport a
`respective type
`of fluid” (claim
`1)
`
`No patentable
`weight.
`
`Alternatively: “that
`can each transport
`any type of fluid”
`
`
`“that can each
`transport an ink
`with a different
`characteristic (e.g.,
`different colored
`inks, infrared-ink, a
`fixative, and the
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`
`20
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HP 1011
`Page 21 of 55
`
`

`
`
`
`
`like)”
`
`the art at the time
`of the invention.
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`Merriam-Webster’s
`Collegiate
`Dictionary, Tenth
`Edition (1994)
`(“receive”)
`
`
`
`Memjet may use
`expert testimony to
`support its
`construction of this
`term and to explain
`its meaning to one
`of ordinary skill in
`the art at the time
`of the invention.
`
`The Random House
`Dictionary of the
`English Language
`
`Plain and ordinary
`meaning
`
`
`
`“attached to or
`fixed on”
`
`
`
`21
`
`Extrinsic Evidence
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and
`extrinsic record.
`
`“located inside”
`
`Extrinsic Evidence
`Ninth New
`Collegiate
`Dictionary
`(Merriam-Webster
`Inc. 1988) at 607,
`982; Am. Heritage
`College Dictionary
`(3d ed. 1997) at
`684, 1139.
`
`Expert testimony as
`to how one of
`ordinary skill in the
`art would
`understand the
`claim term in view
`of the intrinsic and