IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

PROFECTUS TECHNOLOGY LLC, 

Plaintiff, 

v. 

GOOGLE LLC, 

Defendant. 

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§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

CIVIL ACTION NO. 6:20-cv-00101-ADA 

JURY TRIAL DEMANDED 

DEFENDANT GOOGLE LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT 

THAT (1) U.S. PATENT NO. 6,975,308 IS NOT ENTITLED TO THE PROVISIONAL 

FILING DATE, (2) CLAIMS 10 AND 11 ARE INVALID AS INDEFINITE, AND 

(3) GOOGLE DOES NOT INFRINGE UNDER THE DOCTRINE OF EQUIVALENTS

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 1 of 22
TABLE OF CONTENTS 

Page 

i 

I. INTRODUCTION ...............................................................................................................1

II. STATEMENT OF UNDISPUTED MATERIAL FACTS ..................................................2

A. U.S. Patent No. 6,975,308 (“’308 Patent”) And Its Relevant Prosecution ..............2

B. Concurrent Ex Parte Reexamination Of The ’308 Patent .......................................4

III. STATEMENT OF ISSUES .................................................................................................5

IV. LEGAL STANDARD ..........................................................................................................5

V. ARGUMENT .......................................................................................................................5

A. The Asserted Claims Of The ’308 Patent Are Not Entitled To The Priority Filing 

Date Of The ’920 Provisional ..................................................................................5

1. The ’920 Provisional Fails To Disclose “A Sound Detected In 

Proximity Of The Display” Or Using Such An Event To 

“Activat[e] The Display Screen” or “Chang[e] The Image 

Displayed”.................................................................................................. 6

2. Profectus’s Argument That The ’920 Provisional Discloses 

Detecting Sound Lacks Merit .................................................................. 10

3. The PTO Has Already Found—Twice—That The Asserted Claims 

Are Not Entitled To The Priority Date Of The ’920 Provisional ............ 13

B. Dependent Claims 10 And 11 Are Invalid For Indefiniteness Under § 112 ..........13

1. Claim 10 Is Indefinite Because It Is Unclear Whether Its Recited 

“An Event” Is The Same Or Different Than “An Event” Of Claim 

1................................................................................................................ 14

2. Claim 11 Is Indefinite Because It Depends on Indefinite Claim 10 

And Is Unclear Whether It Refers To “An Event” Of Claim 1 Or 

Claim 10 ................................................................................................... 15

C. Google Does Not Infringe Under The Doctrine Of Equivalents ...........................15

VI. CONCLUSION ..................................................................................................................16

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 2 of 22
TABLE OF AUTHORITIES 

Page(s) 

ii 

Cases 

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 

800 F.3d 1375 (Fed. Cir. 2015)............................................................................................6, 12

Lockwood v. Am. Airlines, 

107 F.3d 1565 (Fed. Cir. 1997)..................................................................................................6 

New Railhead Mfg. LLC v. Vermeer Mfg. Co., 

298 F.3d 1290 (Fed. Cir. 2002)..................................................................................................5 

Sensor Elec. Tech., Inc. v. Bolb, Inc., 

No. 18-CV-05194-LHK, 2019 WL 4645338 (N.D. Cal. Sept. 24, 2019)....................13, 14, 15 

X One, Inc. v. Uber Techs., Inc., 

440 F. Supp. 3d 1019 (N.D. Cal. 2020), appeal docketed No. 20-1657 (Fed. 

Cir. May 25, 2021) .............................................................................................................13, 14 

Rules 

Fed.R.Civ.P. 56 ................................................................................................................................5 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 3 of 22
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 Defendant Google LLC moves for partial summary judgment that: (1) consistent with the 

Patent and Trademark Office’s (“PTO’s”) findings, the asserted claims of U.S. Patent No. 

6,975,308 (“’308 Patent”) are not entitled to the priority date of Provisional Application No. 

60/131,920 (“’920 Provisional”); (2) Claims 10 and 11 are invalid as indefinite under § 112;1 and 

(3) Google does not infringe under the doctrine of equivalents (“DOE”). 

I. INTRODUCTION 

 First, the ’308 Patent is not entitled to claim priority to the ’920 Provisional because the 

’920 Provisional fails to disclose “sound detected in proximity of the display,” let alone “activating 

the display screen” or “changing an image displayed” in accordance with such a sound, as required 

by every one of the Asserted Claims. The PTO already decided this issue and found the claims 

are not entitled to the priority date of the ’920 Provisional because the provisional is missing these 

key limitations. This Court should reach the same conclusion for the same reasons. 

 Second, dependent Claims 10 and 11 of the ’308 Patent are indefinite under § 112 because 

they are open to multiple interpretations. Claim 10 recites “an event” and depends on Claim 1, 

which also recites “an event.” Because both claims use the indefinite article “an,” it is unclear 

whether Claim 10’s “event” is the same or different as the “event” of Claim 1. Adding further 

ambiguity, Profectus’s expert offered a third possible interpretation and testified that Claim 10’s 

recited “event” could be either the same as the “event” of Claim 1 or different. Claim 11, which 

depends on Claim 10, only exacerbates the indefiniteness problem because it simply refers to “the 

event” and it is unclear whether this refers to “an event” of Claim 1 or Claim 10. 

 Third, Profectus has presented no evidence of Google’s infringement under the DOE. 

Profectus’s expert in his infringement report recites only the legal standard for the DOE in the 

1

 Claim 10 is not asserted in this litigation. However, Claim 11 is asserted and depends on Claim 10. 

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boilerplate statement of his understanding of the law, and offers no opinion on any alleged 

infringement under the DOE. Likewise, Profectus’s infringement contentions include only 

generic, boilerplate statements regarding Google’s possible infringement under the DOE, without 

any evidence or analysis for any claim, or identifying any limitation allegedly met under the DOE. 

Thus, there is no dispute of material fact that Google does not infringe under the DOE. 

 Accordingly, Google respectfully requests (1) summary judgment that the ’308 Patent’s 

Asserted Claims are not entitled to claim priority to the ’920 Provisional, (2) partial summary 

judgment that Claims 10 and 11 of the ’308 Patent are indefinite under § 112, and (3) partial 

summary judgment that Google does not infringe under the DOE. 

II. STATEMENT OF UNDISPUTED MATERIAL FACTS 

A. U.S. Patent No. 6,975,308 (“’308 Patent”) And Its Relevant Prosecution 

1. The ’308 Patent is titled “Digital Picture Display Frame” and issued from Appl. 

No. 09/502,931 (“’931 Application”), filed on February 11, 2000. Ex. 1 (’308 Patent) at Cover. 

2. Profectus asserts the following claims in this case, with non-asserted base claims 

identified in square brackets and independent claims underlined: 1, 4, [8,] 9, [10,] 11, 22, [29,] 30. 

3. Asserted independent Claim 1 recites: 

 A stand alone and mountable picture display for displaying still 

digital pictures, comprising: 

 [a] a mountable picture frame adapted to digitally display at least 

one still image thereon; 

 [b] the picture frame being a stand alone unit including: 

 [c] a display screen for displaying the at least one still image stored 

in a memory; 

 [d] the memory for storing the at least one still image; 

 [e] an interface coupled to the memory for downloading still images 

to the memory; and 

 [f] control circuitry coupled to the display screen for automatically 

activating the display screen in accordance with an event, wherein the event 

includes one of a change in light intensity, and a sound detected in 

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proximity of the display.

2

4. Asserted independent Claim 22 and independent Claim 29, which is not asserted 

but upon which asserted Claim 30 depends, similarly recite “activating the display screen” (Claim 

22) or “changing an image displayed” (Claims 22, 29) in accordance with “a sound detected in 

proximity of the display” (Claims 22, 29). Accordingly, all Asserted Claims recite “a sound 

detected in proximity of the display” and using that “event” to trigger a function. 

5. Dependent Claim 10, which is not asserted but upon which asserted Claim 11 

depends, recites: “The display as recited in Claim 1, further comprising a speaker for providing 

sounds stored in the memory in accordance with an event.” 

6. Asserted dependent Claim 11 recites: “The display as recited in claim 10, wherein 

the event includes one of a predetermined time or date, a change in light intensity, a sound and 

motion detected in proximity of the display.” 

7. The ’308 Patent claims priority to the ’920 Provisional, filed on April 30, 1999. 

See generally Ex. 2 (’308 Patent File History); see also Ex. 3 (Order Granting Ex Parte Re-Exam 

Request) at 3. During the original prosecution of the ’931 Application, the examiner did not 

expressly examine the applicants’ priority claim. Id.

8. Profectus and its expert Dr. Mitchell Thornton allege that Claims 1, 4, 9, 11, 22, 

and 30 (“Asserted Claims”) of the ’308 Patent are entitled to claim priority to the April 30, 1999 

filing date of the ’920 Provisional. Ex. 8 (Profectus Inf. Contentions at 4); see Ex. 4 (Thornton 

Rebuttal Rep.) ¶¶ 98-102, 114. 

9. The ’920 Provisional describes digital “wall mounted or table top picture frames” 

wherein “an image displayed on the display may be changed in accordance with the amount of 

2

 All emphasis is added unless otherwise noted. 

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light detected” or other events, such as time of day. Ex. 5 (’920 Provisional) at 1, 8-9. It also 

describes “reactivating the display [] when motion is sensed in a room.” Id. at 9. 

10. The ’920 Provisional does not mention “sound” or a “microphone,” and the text 

does not describe detecting sound or using a detected sound as a triggering event to activate the 

display screen or change an image displayed. See generally id. 

11. The ’308 Patent adds disclosure not included in the ’920 Provisional. Similar to 

the ’920 Provisional, the patent explains that the picture frame can “change an image displayed” 

or “activat[e] the display” “in accordance with an event.” Ex. 1 at 2:15-17, 20-21. The ’308 

Patent, however, adds disclosure not contained in the ’920 Provisional, including the addition of a 

“microphone” to the figures and the use of “sound” as a possible triggering event. See, e.g., id. at 

2:17-20 (“The event may include one of a predetermined time or date, a change in light intensity, 

a sound and motion detected in proximity of the display.”), 2:33-36, 2:32-33, 3:9-11, 3:14-16. 

B. Concurrent Ex Parte Reexamination Of The ’308 Patent 

12. On April 9, 2021, Google filed a request for ex parte reexamination of Claims 1-12 

and 22-31 (the Asserted Claims and others) of the ’308 Patent. Ex. 6 (Ex Parte Re-exam Request). 

13. On April 30, 2021, the PTO granted Google’s request for ex parte reexamination. 

Ex. 3. In its order granting ex parte reexamination, the PTO expressly found that “the effective 

filing date of the ’308 patent is that of the filing date of the 931 application, i.e., Feb. 11, 2000, 

not the filing date of the ’920 provisional application.” Id. at 2. The PTO found the ’920 

Provisional “is void of any support for ‘a sound detected in proximity of the display,’ as recited in 

all independent claims of the ’308 Patent.” Id. at 6. Further, the PTO found the ’920 Provisional 

“provides no disclosure concerning detecting sounds (e.g., ambient sounds or voice commands), 

no disclosure concerning any mechanism for detecting sounds (e.g., sound sensors, microphones, 

etc.) and no disclosure of changing an image or activating a display based on detecting sound in 

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proximity of the display.” Id. 

14. On July 27, 2021, the PTO issued a Non-Final Office Action in which it affirmed 

its finding that the ’308 Patent is not entitled to the earlier filing date of the ’920 Provisional and 

rejected all challenged claims. See Ex. 7 (Office Action 7/27/2021) at 2-6, 9. 

III. STATEMENT OF ISSUES 

1. Whether Claims 1, 4, 9, 11, 22, and 30 of the ’308 Patent (the “Asserted Claims”) 

are entitled to claim priority to the ’920 Provisional’s April 30, 1999 filing date. 

2. Whether Claim 10, which is not asserted but upon which asserted Claim 11 

depends, and asserted Claim 11 are invalid for indefiniteness under § 112. 

3. Whether Google infringes under the doctrine of equivalents. 

IV. LEGAL STANDARD 

 Summary judgment should be granted “if the movant shows that there is no genuine dispute 

as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56. 

V. ARGUMENT 

A. The Asserted Claims Of The ’308 Patent Are Not Entitled To The Priority 

Filing Date Of The ’920 Provisional 

For the Asserted Claims to benefit from the ’920 Provisional’s April 30, 1999 filing date, 

the disclosure of the ’920 Provisional must provide support for all limitations of the Asserted 

Claims in compliance with § 112. M.P.E.P. § 211.05; New Railhead Mfg. LLC v. Vermeer Mfg. 

Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (The provisional application must show “each feature 

that is included as a claim limitation.”). In other words, the ’920 Provisional’s disclosure must 

contain a written description of the invention and the manner and process of making and using it, 

in such full, clear, concise, and exact terms, that a person of ordinary skill in the art (POSITA), as 

of the filing date sought, could clearly conclude that the inventor had invented the subject matter 

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claimed in the patent. See, e.g., Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 

1378 (Fed. Cir. 2015). Merely disclosing that which would render the claimed invention obvious 

is not enough. Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) (“a description 

that merely renders the invention obvious does not satisfy the [written description] requirement”). 

There is no presumption that the claims of the ’308 Patent have adequate written 

description support or enablement in the ’920 Provisional because the examiner did not expressly 

examine the applicants’ priority claim during prosecution of the ’308 Patent’s application. See, 

e.g., Dynamic Drinkware, 800 F.3d at 1378 (finding “a presumption that a patent is entitled to the 

benefit of the filing date of its provisional precursor” to be “unsound because the PTO does not 

examine provisional applications as a matter of course”). 

1. The ’920 Provisional Fails To Disclose “A Sound Detected In 

Proximity Of The Display” Or Using Such An Event To “Activat[e] 

The Display Screen” or “Chang[e] The Image Displayed” 

The ’920 Provisional fails to disclose “a sound detected in proximity of the display,” which 

is required by every Asserted Claim. Indeed, the text of the ’920 Provisional does not even use 

the word “sound” or “microphone,” and it does not anywhere describe detecting a sound. The 

’920 Provisional only discloses a “light sensor” or a “motion sensor” “for monitoring conditions 

in areas around the frame.” Ex. 5 at 3, 8-10. For example, while describing the components in 

Figure 5, the ’920 Provisional only discloses “[a] motion sensor 106 . . . for detecting motion in a 

vicinity of frame 10” and “[a] light sensor 110 . . . [that] provides a signal proportional to the 

amount of light incident on frame 10.” Id. at 13. The ’920 Provisional provides no other types of 

sensors, much less one designed to detect sound in proximity of the display. 

The ’920 Provisional similarly fails to disclose that a sound detected in proximity of the 

display may be the triggering event to “activat[e] the display screen” or “chang[e] the image 

displayed,” at least one of which is also required by every Asserted Claim. Instead, consistent 

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with its disclosure of only a light sensor and motion sensor, the ’920 Provisional discloses the 

triggering event as “at least one of motion sensing, achieving a particular time or date or achieving 

a particular lighting condition.” Id. at 13. Again, notably missing is any disclosure concerning 

taking any action (activating the display or changing an image) based on sound detected in 

proximity of the display. Instead, the ’920 Provisional expressly discloses the opposite: activating 

a speaker to output sound based on detecting motion in proximity of the display.” Id. at 10, 13. 

The lack of support for these key claim limitations in the ’920 Provisional is confirmed by 

the additions made by the applicants in the ’308 Patent. For example, the ’308 Patent adds several 

new paragraphs (highlighted below) in its “Summary of the Invention” section disclosing that the 

event may include “a sound and motion detected in proximity of the display” (Ex. 1 at 2:17-20, 

2:33-36, 3:14-16) and “[t]he display may include a microphone for interacting with the display.” 

Id. at 2:62-64. None of these new statements were included in the ’920 Provisional, as shown in 

the comparison below. 

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’920 Provisional ’308 Patent

[...] 

Ex. 5 at 3; Ex. 1 at 1:49-2:21, 2:61-2:64 (annotation added). 

Similarly, in its “Detailed Description of Preferred Embodiments,” the ’308 Patent adds 

another new statement not present in the ’920 Provisional that “images may be changed by ... 

voice activation through speaker/microphone 128 (FIG. 5).” Ex. 1 at 5:65-6:10. 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 11 of 22
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’920 Provisional ’308 Patent

Ex. 5 at 11-12; Ex. 1 at 5:65-6:10 (annotation added). 

Consistent with changes to the text, the applicants also added a “microphone” (mislabeled 

“microprocessor”) to Figure 5 of the ’308 Patent, whereas the provisional lacked this element: 

’920 Provisional ’308 Patent

Ex. 5 at Fig. 5 (highlight added); Ex. 1 at Fig. 5 (highlight added). 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 12 of 22
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Given the foregoing, it is plain that there is no written description or enablement in the 

’920 Provisional for “a sound detected in proximity of the display,” nor for the limitations requiring 

use of such a detected sound as an “event” to trigger some action (activating or changing). Because 

at least one limitation in each of the asserted independent claims is not disclosed in the ’920 

Provisional, the Asserted Claims are not entitled to benefit from the ’920 Provisional’s filing date. 

2. Profectus’s Argument That The ’920 Provisional Discloses Detecting 

Sound Lacks Merit 

Profectus’s expert Dr. Mitchell Thornton does not dispute that the ’920 Provisional fails to 

expressly disclose “activating the display screen” or “changing an image” in response to a detected 

sound. See generally Ex. 4 ¶¶ 98-114. Instead, Dr. Thornton offers only a convoluted 

explanation—based entirely on baseless assumptions: 

(i) Based on an arrow (circled in red below) in Figure 5 of the ’920 Provisional 

going from speaker 128 to microprocessor 124 (in addition to one in the opposite 

direction), Dr. Thornton assumes “data flows” in both directions between speaker 

128 and microprocessor 124. Id. ¶¶ 107-108. 

(ii) Based on the assumption that “data flows” from speaker 128 to 

microprocessor 124, Dr. Thornton assumes that speaker 128 provides “sound 

information” to microprocessor 124. Id. ¶¶ 108-109. 

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(iii) Based on the assumption that speaker 128 provides “sound information” to 

microprocessor 124, Dr. Thornton assumes that speaker 128 is a “transducer” that 

can be used as both a speaker and microphone. Id. ¶¶ 108, 110. 

(iv) Based only on the ’920 Provisional’s separate discussion of a “motion 

sensor,” Dr. Thornton assumes that speaker 128 emits ultrasound, which are 

sound waves that can be used to detect motion. Id. ¶ 109. 

(v) Based on the assumption that speaker 128 can also be used as a microphone, 

Dr. Thornton assumes that speaker 128—used as a microphone—detects the 

ultrasound he assumes would be emitted by that speaker. Id. ¶ 108. 

(vi) Based on the foregoing, Dr. Thornton concludes that a POSITA would 

understand that the ’920 Provisional discloses “monitor[ing] sounds in proximity 

of the display” and using that “as described in the application.” Id. ¶ 114. 

Putting aside whether Dr. Thornton’s arguments are technically valid, the ’920 Provisional 

does not disclose any of his many leaps of faith. The ’920 Provisional does not describe any data 

flowing from speaker 128 to microprocessor 124, let alone “sound information.” Nor does it 

provide any description of a microphone, transducer, ultrasound, detecting sound, using ultrasound 

to detect motion, using sound or ultrasound as an event, or any of the circuitry or components 

required for the speaker to act as a microphone. See supra Section V.A.1; see also Ex. 9 (Thornton 

Dep. Tr.) at 160:16-22 (admitting the ’920 Provisional does not disclose circuitry to convert the 

speaker into a microphone), 164:8-13, 165:5-16 (admitting that not all speakers emit and detect 

ultrasound and that the ’920 Provisional does not disclose a speaker that emits or detects 

ultrasound). 

Dr. Thornton’s entire theory of how the ’920 Provisional purportedly discloses detecting 

sound relies exclusively on a single bidirectional arrow between speaker 128 and microprocessor 

124, which he assumes indicates “sound information” is flowing in both directions and the 

speaker is acting as a microphone. See, e.g., Ex. 9 at 139:18-23 (admitting that other than the 

arrow, nothing in the ’920 Provisional explicitly describes using the speaker as a microphone (to 

detect sound)), 146:15-24. But Dr. Thornton also admitted that when a speaker is operating as a 

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speaker, the current driving the speaker will flow in both directions, id. at 155:18-158:5, which 

would also explain the bidirectional arrows. 

Moreover, Dr. Thornton’s argument that a POSITA would understand that speaker 128 is 

used to emit and detect ultrasound so as to detect motion is contradicted by the specification and 

claims of the patent. For example, Figure 5 expressly discloses a separate motion sensor 106. 

(See above.) If the inventors had intended speaker 128 to detect motion—as Dr. Thornton 

suggests—then the disclosure of a separate motion sensor would have been redundant and 

unnecessary. Similarly, the addition of the microphone in Figure 5 of the ’308 Patent would 

have been unnecessary if the ’920 Provisional (which did not include a microphone in Figure 5) 

already clearly disclosed a “microphone” or a speaker that could be used as a microphone. (See 

Section V.A.1, above.) Further, Claim 11 of the ’308 Patent separately recites detecting “sound” 

and detecting “motion” as being alternative possible “events,” demonstrating that the applicants 

knew how to describe a speaker for detecting sound as distinct from one for detecting motion. 

Contrary to Dr. Thornton’s tortured reading of the ’920 Provisional, the application 

provides no disclosure concerning detecting sounds (e.g., ambient sounds or voice commands), or 

any mechanism for detecting a sound (e.g., sound sensors, microphones, etc.). And even if the 

single arrow in Figure 5 did provide an adequate written description and enablement for detecting 

sound, which it plainly does not, nothing in the ’920 Provisional even mentions using sound 

detected in proximity of the device as a triggering event to activate the display or change the image 

displayed. See also Ex. 3 at 6. Accordingly, the ’920 Provisional does not disclose with reasonable 

clarity to a POSITA that, as of the date of the application, the inventors were in possession of the 

invention with such features. Dynamic Drinkware, 800 F.3d at 1378. The ’920 Provisional thus 

fails to disclose all limitations of the Asserted Claims, and the Asserted Claims are not entitled to 

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claim priority to the ’920 Provisional’s filing date. 

3. The PTO Has Already Found—Twice—That The Asserted Claims 

Are Not Entitled To The Priority Date Of The ’920 Provisional

Confirming the lack of support in the ’920 Provisional, the PTO has already twice found 

that the Asserted Claims are not entitled to the filing date of that application. In its order granting 

Google’s ex parte reexamination request, and again in its July 27, 2021 Office Action in the same 

proceeding, the PTO found that “the effective filing date of the ’308 patent is that of the filing 

date of the 931 application, i.e., Feb. 11, 2000, not the filing date of the ’920 provisional 

application.” Ex. 3 at 2; Ex. 7 at 2. In reaching its conclusion, the PTO found that the ’920 

Provisional failed to disclose every limitation of the Asserted Claims because it failed to disclose 

(1) “a sound detected in proximity of the display” and (2) that the triggering event (for “changing 

an image” or “activating the display screen”) can be detected sound. Ex. 3 at 3, 5; Ex. 7 at 3, 5. 

Most tellingly, Profectus had the opportunity to dispute the PTO’s priority date finding in response 

to the order granting reexamination. But rather than submit Dr. Thornton’s fantastical arrow 

theory, Profectus tried to delay the PTO’s first office action until after trial in this matter. See Ex. 

10 at 7. The PTO rejected these baseless efforts and again found the lack of support in the ’920 

Provisional. Ex. 11; Ex. 7 at 2-6. 

B. Dependent Claims 10 And 11 Are Invalid For Indefiniteness Under § 112 

Basic claim drafting requires that, when a noun is first introduced in a claim set, the noun 

must be preceded by the indefinite article “a” or “an.” Sensor Elec. Tech., Inc. v. Bolb, Inc., No. 

18-CV-05194-LHK, 2019 WL 4645338, at *31 (N.D. Cal. Sept. 24, 2019). When the same noun 

is later repeated in the same claim or in a dependent claim, the noun should be preceded by the 

definite article “the” or “said.” Id. Otherwise, repeating the same noun with the indefinite article 

may refer to a second and different claim element. See, e.g., X One, Inc. v. Uber Techs., Inc., 440 

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F. Supp. 3d 1019, 1036 (N.D. Cal. 2020), appeal docketed No. 20-1657 (Fed. Cir. May 25, 2021). 

1. Claim 10 Is Indefinite Because It Is Unclear Whether Its Recited “An 

Event” Is The Same Or Different Than “An Event” Of Claim 1 

Dependent Claim 10 recites “an event” and depends on Claim 1, which also recites “an 

event.” It is, thus, unclear whether Claim 10’s recited “an event” is the same as Claim 1’s recited 

“an event” (in which case it should have been written as “the event”), or a second and different 

event than Claim 1’s recited “an event” (in which case it should have been written as “a second 

event,” or something similar). 

This ambiguity is important because Claim 1 and Claim 10 each require a different action 

in response to their respective recited “an event.” If Claim 10’s “an event” is the same as Claim 

1’s “an event,” then Claim 10’s “an event” must: (i) include “one of a change in light intensity, 

and a sound detected in proximity of the display;” (as required by Claim 1) and (ii) be the trigger 

to both “activat[e] the display screen” (Claim 1) and “provid[e] sounds” (Claim 10). On the other 

hand, if Claim 10’s “an event” is different than Claim 1’s “an event,” then Claim 10’s “an event”: 

(i) need not be a change in light or detected sound, but could be some other type of event (e.g., a 

button push or timer); and (ii) need not be the trigger to “activat[e] the display screen” (Claim 1), 

but is only required to be the trigger to “provid[e] sounds” (Claim 10). 

The specification supports both interpretations and therefore does not provide any 

clarification. Ex. 12 ¶¶ 1319-22. For example, the patent describes activating the display and 

playing sounds in response to detecting sounds, but it also describes playing sounds in response to 

other events, such as motion. Ex. 1 at 2:15-21, 2:32-36, 3:6-16. The prosecution history similarly 

provides no clarification. Ex. 12 ¶ 1319; see generally Ex. 2. Because a POSITA, viewing the 

claims in light of the specification and prosecution history, cannot determine the scope of the 

recited “an event” with reasonable certainty, Claim 10 is invalid as indefinite. Id.

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Profectus does not deny that Claim 10 is open to multiple interpretations. See generally

Ex. 4. To the contrary, when asked during deposition, Profectus’s expert Dr. Thornton offered a 

third possible interpretation and testified that Claim 10’s recited “an event” could be either the 

same as the recited “an event” in Claim 1 or different. Ex. 9 at 256:16-257:11. Thus, by Dr. 

Thornton’s own admission, Claim 10 is indefinite.

2. Claim 11 Is Indefinite Because It Depends on Indefinite Claim 10 And 

Is Unclear Whether It Refers To “An Event” Of Claim 1 Or Claim 10 

Because Claim 11 depends on indefinite Claim 10, Claim 11 is also indefinite for the same 

reasons. Claim 11 is also indefinite because it uses the definite article to recite “the event” but it 

is unclear whether it refers to “an event” of Claim 1 or Claim 10. This ambiguity is analogous to 

the ambiguity in Sensor Electronic Technology, Inc. v. Bolb, Inc., where the court found a 

dependent claim indefinite for reciting “the material” when the independent claim on which it 

depends recited “a material” twice, first in reference to “a first layer composed of a material,” and 

second in reference to “a second layer composed of a material.” No. 18-CV-05194-LHK, 2019 

WL 4645338, at *31 (N.D. Cal. Sept. 24, 2019). The court explained that “it is ambiguous whether 

the claim term ‘the material’ refers to ‘a first layer composed of a material,’ or ‘a second layer 

composed of a material,’ or both.” Id. Similarly here, it is ambiguous whether “the event” in 

Claim 11 refers to the recited “an event” in Claim 10, the recited “an event” in Claim 1, or both. 

Profectus’s expert offered no response to Google’s expert, who opined that Claim 10 and 

Claim 11 are indefinite, and he provided no opinion on whether Claim 11’s “the event” refers to 

“an event” of Claim 1 or Claim 10. Accordingly, Claim 11, like Claim 10, is invalid as indefinite. 

C. Google Does Not Infringe Under The Doctrine Of Equivalents 

Profectus has presented no evidence of Google’s infringement under the DOE. 

Profectus’s expert recites only the legal standard for the DOE in the boilerplate “Legal 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 18 of 22
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Standards” section of his report and offers no opinion on any alleged infringement under the 

DOE. Ex. 13 (Thornton Inf. Report) ¶ 38; see generally id. at ¶¶ 27-44. Indeed, the words 

“equivalents” and “equivalence” appear nowhere in the report other than in the “Legal 

Standards” section. Id. 

Likewise, Profectus’s infringement contentions contain only generic, boilerplate 

statements regarding Google’s possible infringement under the DOE, without presenting any 

affirmative evidence or analysis, or even identifying any element alleged to be satisfied under 

the DOE. See Ex. 8 at 4, Ex. A (cover). Profectus’s infringement contentions simply state: “[I]f 

any differences between the claim elements and the accused instrumentalities exist, such 

differences are insubstantial, and the accused instrumentalities thus infringe under the doctrine of 

equivalents.” Id. at 4. No further analysis or explanation is provided. Profectus’s infringement 

contentions claim chart similarly provides only boilerplate language on its cover page and does 

not address DOE for any claim in its claim-by-claim analysis. See id. at Ex. A. Profectus has 

offered no evidence of Google’s infringement under the DOE and thus, there is no dispute of 

material fact that Google does not infringe under the DOE. 

VI. CONCLUSION 

For the foregoing reasons, Google respectfully requests (1) summary judgment that the 

’308 Patent’s Asserted Claims are not entitled to the April 30, 1999 priority date of the ’920 

Provisional, (2) partial summary judgment that Claims 10 and 11 are invalid as indefinite, and (3) 

partial summary judgment that Google does not infringe under the DOE. 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 19 of 22
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Dated: August 24, 2021 Respectfully submitted, 

By /s/ Marc Pensabene 

Steve McConnico 

Texas State Bar No. 13450300 

Paige Arnette Amstutz 

Texas State Bar No. 00796136 

SCOTT, DOUGLASS & MCCONNICO, LLP 

303 Colorado Street, Suite 2400 

Austin, TX 78701 

Telephone: (512) 495-6300 

Facsimile: (512) 495-6399 

smcconnico@scottdoug.com 

pamstutz@scottdoug.com 

Darin W. Snyder (Pro Hac Vice)

dsnyder@omm.com 

Luann L. Simmons (Pro Hac Vice) 

lsimmons@omm.com 

Mark Liang (Pro Hac Vice)

mliang@omm.com 

Daniel Silverman (Pro Hac Vice)

dsilverman@omm.com 

O’MELVENY & MYERS LLP 

Two Embarcadero Center, 28th Floor 

San Francisco, California 94111-3823 

Tel: (415) 984-8700 

Fax: (415) 984-8701 

Marc J. Pensabene (Pro Hac Vice) 

mpensabene@omm.com 

O’MELVENY & MYERS LLP 

Times Square Tower 

7 Times Square 

New York, NY 10036 

Tel: (212) 326-2000 

Fax: (212) 326-2061 

Stacy P. Yae (Pro Hac Vice) 

syae@omm.com 

O’MELVENY & MYERS LLP 

400 South Hope Street, 18th Floor 

Los Angeles, CA 90071-2899 

Tel: (213) 430-6000 

Fax: (213) 430-6407 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 20 of 22
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Eugene Y. Mar 

Winston Liaw 

Daniel C. Callaway (Pro Hac Vice) 

Stephanie Skaff (Pro Hac Vice) 

FARELLA BRAUN + MARTEL, LLP 

235 Montgomery Street, 18th Floor 

San Francisco, CA 94104 

Telephone: (415) 954-4400 

Facsimile: (415) 954-4480 

emar@fbm.com 

wliaw@fbm.com 

dcallaway@fbm.com 

sskaff@fbm.com 

Attorneys for Defendant Google LLC 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 21 of 22
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CERTIFICATE OF SERVICE 

Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that, on August 24, 2021, all counsel of record who have appeared in this case are being served 

with a copy of the foregoing via the Court’s CM/ECF system. 

Dated: August 24, 2021 /s/ Michael O’Donnell 

 Michael O’Donnell 

Case 6:20-cv-00101-ADA Document 96 Filed 08/24/21 Page 22 of 22