Sandisk Corporation v. Round Rock Research LLC

Filing 179

SUPPLEMENTAL CLAIM CONSTRUCTION ORDER. Signed by Judge Richard Seeborg on 6/4/13. (cl, COURT STAFF) (Filed on 6/4/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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For the Northern District of California

United States District Court

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SAN DISK CORPORATION,
Plaintiff,
v.

No. C 11-5243 RS
SUPPLEMENTAL CLAIM
CONSTRUCTION ORDER

ROUND ROCK RESEARCH LLC
Defendant.
____________________________________/

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As requested, the parties have provided supplemental briefing regarding construction of the

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term “program means” as used in claim 1 of U.S. Patent No. 5,682,345 (“the ’345 patent). The

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parties are in agreement that this claim is written in means-plus-function format under 35 U.S.C. §

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112 (f), and that the claimed function is “programming the non-volatile memory device with data

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from the volatile memory device.” The sole question to be decided at this juncture is what structure

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described in the specification is the “corresponding structure” that performs the claimed function.

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See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308-09 (Fed.Cir.

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1998); B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir. 1997) ( “[S]tructure

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disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution

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history clearly links or associates that structure to the function recited in the claim.”).

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Round Rock previously argued that only transistors 24 and 26 constitute the structure that

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performs the “program means” function. SanDisk previously contended that transistors 16 and 20

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represent the corresponding structure and that transistors 24 and 26 merely provide a pathway for

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the data to flow through. In response to the Courts query whether the corresponding structure could

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be seen as all four of the resistors and possibly additional linking circuitry, Round Rock has

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maintained its position that only transistors 24 and 26 perform the function. San Disk now contends

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that all four transistors, together with the “shared control signal wire” that connects them is structure

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corresponding to “program means.”

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As discussed in the claims construction order, “program means” is one of three means terms

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grouped under the broader term “control means.” San Disk originally argued no structure was

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disclosed that separately performs a “control” function. Now that “control means” has been

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construed to be effectively nothing more than a collective label for the three subsidiary means, San
Disk argues it is appropriate to include elements that perform “control” function in those means.

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For the Northern District of California

United States District Court

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Accordingly, San Disk has embraced the notion that all four resistors perform the recited function of

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programming the non-volatile memory device, and has explained how the shared control signal wire

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is a necessary part of that structure as well.

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Round Rock repeats and amplifies on its prior argument that the only corresponding

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structure is transistors 24 and 26. It relies particularly on the fact that the specification describes the

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latch circuitry, including transistors 16 and 20, in connection with performing the load function, and

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on language suggesting that the loading must precede programming. Some of the same language to

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which Round Rock points, however, equally supports the conclusion that the loading is part of how

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the non-volatile memory is programmed. See ’345 patent at 3:53-54 (the flash cell C and C[bar] are

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programmed by first loading the programming data into the Latch section 12.” (emphasis added)).

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As previously noted, the specification also clearly links the latch transistors to the programming

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function by stating that “transistor 20 . . . . will provide the programming current to cell C. If cell

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C[bar] is being programmed, the programming current is provided by transistor 16 . . . .” ’345

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patent 5:1-4).

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Round Rock dismisses the role of transistors 16 and 20 in the programming function by

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asserting they merely “enable” the programming to occur, rather than performing any part of the

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programming. Round Rock relies on Asyst Technologies, Inc. v. Empak, Inc., 268 F.3d 1364

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(Fed.Cir. 2001) where a “ communication line 51” was found not to be part of the structure

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associated with a “second microcomputer means,” even though that line undisputedly “enable[d] the

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second microcomputer means to perform its recited functions.” Id. at 1370-71. The Asyst court

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analogized to a toaster and an electrical outlet, observing, “[a]n electrical outlet enables a toaster to

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work, but the outlet is not for that reason considered part of the toaster.” Id. at 1371.1
While the general principle Round Rock advances undoubtedly is sound, it has not shown

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that transistors 16 and 20 can reasonably be characterized as only “enabling” the programming

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function, as opposed to performing a significant part of that function. The specification clearly links

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the entire structure as described by San Disk to the program function. Accordingly, its construction
will be adopted, and the corresponding structure for “program means” is declared to be transistors

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For the Northern District of California

United States District Court

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16, 20, 24, and 26 and the shared control wire.

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IT IS SO ORDERED.

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Dated: 6/4/13
RICHARD SEEBORG

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UNITED STATES DISTRICT JUDGE

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The court did not explain why line 51 was more analogous to a wall outlet than to the toaster’s
power cord, which reasonably could be considered part of the toaster, although still debatable as to
whether it performed a toasting function.

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