Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Semcon IP Inc. v. Huawei Device USA Inc.

United States District Court, E.D. Texas, Marshall Division

July 12, 2017

SEMCON IP INC., Plaintiff,
v.
HUAWEI DEVICE USA INC., et al., Defendants. Term Agreed Construction

          CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         Before the Court is the opening claim construction brief of Semcon IP Inc. (“Plaintiff”) (Dkt. No. 120, filed on April 26, 2017), [1] the response of Texas Instruments Incorporated, Mediatek Inc., Mediatek USA Inc., STMicroelectronics, Inc., ZTE (USA) Inc., ZTE (TX), Inc., Huawei Device USA Inc., Huawei Technologies USA Inc., and Huawei Technologies Co., Ltd. (collectively “Defendants”) (Dkt. No. 138, filed on May 17, 2017), and the reply of Plaintiff (Dkt. No. 145, filed on May 25, 2017). The Court held a hearing on the issues of claim construction and claim definiteness on June 30, 2017. Having considered the arguments and evidence presented by the parties at the hearing and in their briefing, the Court issues this Order.

         Table of Contents

         I. BACKGROUND ............................................................................................................... 3

         A. The Power-Management Patents ............................................................................ 3

         B. The Bus-Controller Patent ...................................................................................... 4

         II. LEGAL PRINCIPLES ..................................................................................................... 5

         A. Claim Construction ................................................................................................. 5

         B. Departing from the Ordinary Meaning of a Claim Term ........................................ 8

         C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................... 9

         III. AGREED CONSTRUCTIONS ...................................................................................... 10

         IV. CONSTRUCTION OF THE POWER-MANAGEMENT PATENTS ....................... 11

         A. “computer processor, ” “a processor, ” “processing unit, ” and “processing device” .................................................................................................................. 11

         B. “a counter” ............................................................................................................ 18

         C. “determining an allowable reduced power consumption level” and “determining a level of permitted power consumption” ....................................... 21

         D. Executing-Instructions-While-Changing-Voltage Terms ..................................... 23

         E. “voltage source includes a programmable voltage supply, ” “a power supply furnishing selectable output voltages, ” “a selectable voltage, ” and “programmable power supply” ............................................................................. 27

         F. Change-the-Voltage Terms ................................................................................... 29

         G. “idle time, ” “idle state, ” “sleep state, ” and “halt state” ........................................ 32

         H. “reducing a magnitude of a difference …” ........................................................... 36

         V. CONSTRUCTION OF THE BUS-CONTROLLER PATENT .................................. 39

         A. “channel, ” “communication(s) channel(s), ” and “channel for the communication” .................................................................................................... 39

         B. “transmitting information regarding the assigned channel to the pair of subsystems” and “transmitting a communications channel designation to the pair of subsystems” ......................................................................................... 41

         C. “instructing the pair of subsystems to commence communication on the assigned channel” and “exchanging said communications between said subsystems over the assigned communications channel” ..................................... 44

         D. “relatively short messages” ................................................................................... 48

         VI. CONCLUSION ............................................................................................................... 50

         I. BACKGROUND

         Plaintiff alleges infringement of five U.S. Patents: No. 5, 978, 876 (the “'876 Patent”), No. 7, 100, 061 (the “'061 Patent”), No. 7, 596, 708 (the “'708 Patent”), No. 8, 566, 627 (the “'627 Patent”), and 8, 806, 247 (the “'247 Patent”) (collectively, the “Asserted Patents”). The Asserted Patents include patents from two patent families: The Power-Management Patents (the '061, '708, '627, and '247 Patents) and the Bus-Controller Patent (the '876 Patent).

         A. The Power-Management Patents

         The Power-Management Patents are directed generally to technology for managing the amount of power consumed by a computer system by dynamically adjusting the processor's operating frequency and voltage. These patents are related through a series of continuation applications and all ultimately claim priority to the application that issued as the '061 Patent, which was filed on January 18, 2000. The '061 Patent was subject to an inter partes reexamination requested on June 13, 2007 and from which a certificate issued on August 4, 2009.

         The abstracts of the Power-Management Patents are identical and provide as follows:

A method for controlling the power used by a computer including the steps of measuring the operating characteristics of a central processor of the computer, determining when the operating characteristics of the central processor are significantly different than required by the operations being conducted, and changing the operating characteristics of the central processor to a level commensurate with the operations being conducted

         Claims 1 and 17 of the '247 Patent, exemplary method and system claims respectively, provide:

         1. A method, comprising:

determining a level of permitted power consumption by a processing device from a set of operating conditions of the processing device, with the determining the level of permitted power consumption not based upon instructions to be executed by the processing device;
determining a highest allowable frequency of operation of the processing device that would result in power consumption not exceeding the level of permitted power consumption;
determining a lowest allowable level of voltage to apply to the processing device that would allow execution of the instructions by the processing device at the highest allowable frequency; and
changing power consumption of the processing device during execution of the instructions by reducing a magnitude of a difference between an operating frequency of the processing device and the highest allowable frequency of operation of the processing device and reducing a magnitude of a difference between a voltage applied to the processing device and the lowest allowable level of voltage.

         17. An apparatus, comprising:

a frequency generator configured to generate a first clock signal at a first frequency; and
a processing device configured to receive the first clock signal and a first voltage provided by a voltage source, the processing device operable to monitor operating parameters of the processing device, the processing device operable to determine a second frequency of the first clock signal and a second voltage for operation of the processing device at lower power than operation at the first frequency and the first voltage, with the processing device operable to determine the second frequency and the second voltage not based on instructions to be executed by the processing device, the processing device operable to control the frequency generator to change from generating the first clock signal at the first frequency to generating the first clock signal at a second frequency, and the processing device operable to control the voltage source to change from providing the first voltage to providing the second voltage during execution of the instructions by the processing device.

         B. The Bus-Controller Patent

         The '876 Patent is directed generally to technology for improving communications of subsystems of a computer system by dynamically managing communication-bus usage. The patent issued from an application filed on April 14, 1997.

         The abstract of the '876 Patent provides:

A communication control system provides dynamic centralized control of subsystem communications. In a preferred embodiment, a dedicated subsystem communications coordinator is coupled to a main control bus which is utilized for subsystem communication. The coordinator is further coupled to each subsystem for enabling subsystem communication. The coordinator preferably assigns each pending communication a time-based transfer-window channel designation which, while asserted on the control lines of the main control bus, signals corresponding enabled subsystems to transfer data. The coordinator further preferably monitors all subsystem communications for limiting message length and for continuously determining the most effective main control bus utilization according to current system-wide communications needs.

         Claims 2 and 15 of the '876 Patent, exemplary system and method claims respectively, provide:

         2. A system for coordinating and controlling communications over a plurality of subsystems, comprising:

a plurality of subsystems for sending and receiving communications; and
a communications controlling coordinator coupled to each of the subsystems for controlling said communications between said subsystems;
the communications controlling coordinator including a processor for determining a need for communication between a pair of the subsystems, assigning a channel for the communication, transmitting information regarding the asssigned channel to the pair of subsystems, and instructing the pair of subsystems to commence communication on the assigned channel.

         15. A method of dynamically controlling communications between a plurality of subsystems, comprising:

providing a plurality of subsystems;
assigning an address to each subsystem;
determining a need for communications between a pair of the subsystems;
assigning one of a plurality of communications channels to conduct the communication between the pair of subsystems;
transmitting a communications channel designation to the pair of subsystems to alert the subsystems of the assigned communications channel; and
exchanging said communications between said subsystems over the assigned communications channel.

         II. LEGAL PRINCIPLES

         A. Claim Construction

         “It is a ‘bedrock principle' of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.'” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. The general rule-subject to certain specific exceptions discussed infra-is that each claim term is construed according to its ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time.”) (vacated on other grounds).

         “The claim construction inquiry … begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n all aspects of claim construction, ‘the name of the game is the claim.'” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)). First, a term's context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim's meaning, because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.

         “[C]laims ‘must be read in view of the specification, of which they are a part.'” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.'” Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the specification-even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

         The prosecution history is another tool to supply the proper context for claim construction because, like the specification, the prosecution history provides evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history may be “unhelpful as an interpretive resource”).

         Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record in determining the legally operative meaning of claim language.'” Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim construction:

In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be “so interspersed with technical terms and terms of art that the testimony of scientific witnesses is indispensable to a correct understanding of its meaning”). In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the “evidentiary underpinnings” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         B. Departing from the Ordinary Meaning of a Claim Term

         There are “only two exceptions to [the] general rule” that claim terms are construed according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”[2] Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.”). The standards for finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.

         To act as his own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term, ” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee's lexicography must appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.

         To disavow or disclaim the full scope of a claim term, the patentee's statements in the specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”). “Where an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

         C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)[3]

         Patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is determined from the perspective of one of ordinary skill in the art as of the time the application for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).

         When a term of degree is used in a claim, “the court must determine whether the patent provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is used in a claim, “the court must determine whether the patent's specification supplies some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).

         In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as indefinite if the claim fails to disclose adequate corresponding structure to perform the claimed functions. Williamson, 792 F.3d at 1351-52. The disclosure is inadequate when one of ordinary skill in the art “would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.” Id. at 1352.

         III.AGREED CONSTRUCTIONS

         The parties agreed to the following construction set forth in their Joint Claim Construction Chart (Dkt. No. 160).

Term[4]
Agreed Construction

host computer

• '876 Patent Claims 1, 5

plain and ordinary meaning

         Having reviewed the intrinsic and extrinsic evidence of record, the Court agrees with and hereby adopts the parties' agreed construction.

         IV. CONSTRUCTION OF THE POWER-MANAGEMENT PATENTS

         A.computer processor, ” “a processor, ” “processing unit, ” and “processing device”

Disputed Terms

Plaintiffs Proposed Construction

Defendants' Proposed Construction

computer processor

• '061 Patent Claims 1, 15, 23, 30, 39

plain and ordinary meaning

CPU, which does not include the operating system

processor

• '061 Patent Claims 8, 10, 11, 56[5]

• '708 Patent Claims 1, 7, 20, 23, 26, 33, 36,39,51,55,59

processing unit

• '061 Patent Claims 8, 11,56

• '708 Patent Claims 20, 23, 26, 33, 36, 39, 55,59

• '627 Patent Claims 1, 10, 16, 23

plain and ordinary meaning

computing portion of CPU, which does not include the operating system

processing device

• '247 Patent Claims 1, 10, 17

         Because the parties' arguments and proposed constructions with respect to these terms are related, the Court addresses the terms together.

         The Parties' Positions

         Plaintiff submits: The intrinsic record does not support the negative “which does not include the operating system” limitation. Dkt. No. 120 at 11. First, the prosecution-history argument that a prior-art reference disclosed power management via an operating-system rather than via a processor is nonsensical because the processes of an operating system necessarily involve a processor. Id. at 11-12. The patent examiner noted this flaw in the applicant's argument, and rejected it. Id. at 12-13. Second, the applicant abandoned the operating-system-vs-processor argument and instead overcame the prior art by amending the claims to include limitations directed to executing instructions while the voltage is changed. Id. at 13. Third, the patentee expressly disavowed the operating-system-vs-processor argument in reexamination of the '061 Patent. Id. Thus, there is not a clear and unambiguous disclaimer of an operating system. Id. at 13-14.

         In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: '061 Patent File Wrapper July 7, 2003 Amendment and Response to Final Office Action (Plaintiff's Ex. F, Dkt. No. 120-7), September 9, 2003 Office Action (Plaintiff's Ex. G, Dkt. No. 120-8), February 13, 2004 Amendment and Response to Office Action (Plaintiff's Ex. H, Dkt. No. 120-9), April 27, 2004 Office Action (Plaintiff's Ex. I, Dkt. No. 120-10), July 16, 2004 Interview Summary (Plaintiff's Ex. J, Dkt. No. 120-11), August 27, 2007 Reply to Office Action in Inter Partes Reexamination (Plaintiff's Ex. K, Dkt. No. 158-1); U.S. Patent No. 5, 812, 860 (Plaintiff's Ex. P, Dkt. No. 121-5). Extrinsic evidence: Rosing Decl.[6] ¶¶ 9-12 (Plaintiff's Ex. X, Dkt. No. 122-1 at 4).

         Defendants respond: The patentee disclaimed an operating system from the scope of the processor claims during prosecution of the '061 Patent. Dkt. No. 138 at 8-11. This disclaimer is effective whether or not the patent examiner rejected the argument. Id. at 11. And the disclaimer is not nonsensical: the patentee distinguished the “operating system” from the processor's dedicated control software and the distinction is technologically sound. Id. at 12. In this circumstance, a negative limitation is appropriate. Id. at 12-13.

         In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic evidence to support their position: Intrinsic evidence: '061 Patent File Wrapper July 7, 2003 Amendment and Response to Final Office Action (Defendants' Ex. H, Dkt. No. 138-8), February 13, 2004 Amendment and Response to Office Action (Defendants' Ex. G, Dkt. No. 138-7). Extrinsic evidence: Nazarian Decl.[7] ¶¶ 32-35 (Defendants' Ex. N, Dkt. No. 138-14 at 10-11); Thornton Decl.[8] ¶¶ 59-62[9] (Defendants' Ex. O, Dkt. No. 138-15).

         Plaintiff replies: Taken in the context of the entire intrinsic record, which includes erroneous characterizations of the prior art and an express disavowal of the operating-system-vs-processor argument in reexamination of the '061 Patent, the operating-system-vs-processor argument is not a clear and unambiguous disclaimer. Dkt. No. 145 at 6-8.

         Plaintiff cites further extrinsic evidence to support its position: Nazarian Decl. ¶¶ 32-35 (Defendants' Ex. N, Dkt. No. 138-14 at 10-11).

         Analysis

         The issue here is whether the “processor, ” “processing unit, ” and “processing device” of the claims exclude an operating system. During prosecution of the '061 Patent, the patentee initially distinguished the claims of the '061 Patent from prior art on the grounds that the claims were directed to power-management by the processor without regard to an operating system. In the course of prosecution, however, the examiner rejected this argument, the patentee acquiesced to the examiner's rejection, and the ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.