St. Clair Intellectual Property Consultants Inc. v. Acer Inc. et al

Filing 747

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 8/7/12. Associated Cases: 1:09-cv-00354-LPS, 1:10-cv-00282-LPS(ntl)

IN THE UNITED STATES piSTRICT COURT
FOR THE DISTRICT dF DELAWARE

ST. CLAIR INTELLECTUAL PROPERTY :
CONSULTANTS, INC.,
Plaintiff,

v.
ACER, INC.; ACER AMERICA
CORPORATION; DELL INC.;
GATEWAY INC.; LENOVO (UNITED
STATES) INC.; GATEWAY
COMPANIES, INC.; APPLE, INC.;
TOSHIBA CORPORATION; TOSHIBA
AMERICA INFORMATION SYSTEMS,
INC.; TOSHIBA AMERICA INC.; and
INTEL CORPORATION,

t.A. No. 09-354-LPS
¢.A. No. 09-704-LPS
tONSOLIDATED CASES
!

I

Defendants.
MICROSOFT CORPORATION,
Plaintiff,

I

t.A. No. 10-282-LPS

v.
ST. CLAIR INTELLECTUAL
PROPERTY CONSULTANTS, INC.
Defendant.

I

Richard D. Kirk, Esq., Stephen B. Brauerman, Esq., ~AYARD, P.A., Wilmington, DE; R.
Terrance Rader, Esq., Charles W. Bradley, Esq., Gle E. Forbis, Esq., Linda D. Mertes, Esq.,
RADER, FISHMAN & GRAUER PLLC, Bloomfiel , MI.
i

Attorneys for Plaintiff/Defendant St. Clair Intellectual Property Consultants, Inc.

l
J

Richard L. Horwitz, Esq., David E. Moore, Esq., PO~TER ANDERSON & CORROON LLP,
Wilmington, DE; Kai Tseng, James H. Lin, Michael!C. Ting, FREITAS TSENG & KAUFMAN
LLP.
Attorneys for Defendants Acer Inc. and AcerjAmerica Corporation.

Richard L. Horwitz, Esq., David E. Moore, Esq., POtTER ANDERSON & CORROON LLP,
Wilmington, DE; Avelyn M. Ross, Esq., Christopherlv. Ryan, Esq., Jeffery T. Han, Esq.,
Jennifer L. Nall, Esq., Rebecca J. Cantor, Esq., VIN~N & ELKINS LLP, Austin, TX;
Constance S. Huttner, Esq., VINSON & ELKINS LLr, New York, NY; Kimball R. Anderson,
Esq., WINSTON & STRAWN LLP, Chicago, IL.
!

i

Attorneys for Defendants Dell Inc. and Gateway Inc.
I
Richard L. Horwitz, Esq., David E. Moore, Esq., POtTER ANDERSON & CORROON LLP,
Wilmington, DE; Jeffrey K. Sherwood, Esq., Leslie~. Jacobs, Esq., Cameron W. Westin, Esq.,
DICKSTEIN SHAPIRO LLP, Washington, D.C.; Ch lesE. Miller, Esq., Brian D. Siff, Esq.,
Robert G. Gingher, Esq., DICKSTEIN SHAPIRO L P, New York, NY.
I
:

Attorneys for Defendant Lenovo (United Sta*s) Inc.
I
I

Richard L. Horwitz, Esq., David E. Moore, Esq., POfTER ANDERSON & CORROON LLP,
Wilmington, DE; Jeffrey K. Sherwood, Esq., Leslie 1).. Jacobs, Esq., Cameron W. Westin, Esq.,
DICKSTEIN SHAPIRO LLP, Washington, D.C.
I

i

Attorneys for Toshiba Corporation, Toshiba {unerica Information Systems, Inc., and
Toshiba America Inc.
·
:

i

l
I

I
'

l

Richard L. Horwitz, Esq., David E. Moore, Esq., PO:PER ANDERSON & CORROON LLP,
Wilmington, DE; Timothy S. Teter, Esq., Benjamin . Damstedt, Esq., Elizabeth Stameshkin,
Esq., Matthew J. Brigham, Esq., COOLEY GODW
KRONISH LLP, Palo Alto CA.
Attorneys for Defendant Apple, Inc.

i

i

Richard L. Horwitz, Esq., David E. Moore, Esq., POrTER ANDERSON & CORROON LLP,
Wilmington, DE; Chad S. Campbell, Esq., Timothy . Franks, Esq., PERKINS COlE LLP,
Phoenix, AZ; Michael D. Broaddus, Esq., PERKINS I COlE LLP, Seattle, W A.
I
!

Attorneys for Intervenor Defendant Intel Corforation.
I

William J. Marsden, Jr., Esq., Tara D. Elliott, Esq., r·nhong Zhang, Esq., FISH &
RICHARDSON P.C., Wilmington, DE. Ruffin B. C rdell, Esq. and Lauren A. Degnan, Esq.,
FISH & RICHARDSON P.C., Washington, D.C.
Attorneys for Plaintiff Microsoft

Corporatio~.

MEMORANDU~ OPINION
August 7, 2012
Wilmington, Delaware

l
l

Pending before the Court is the issue of clairni construction of fifteen disputed terms

I

l
i
1
J

l
I

1

found in U.S. Patent Nos. 5,710,929 (the '"929 pate~"); 5,758,175 (the"' 175 patent");
'

5,892,959 (the "'959 patent"); 6,079,025 (the "'025

~atent"); 5,630,163 (the"' 163 patent);
I

5,613,130 (the"' 130 patent"); and 5,961,617 (the "'~17 patent") (collectively, the "patents-insuit").

I.

BACKGROUND
A.

Procedural History

Plaintiff St. Clair Intellectual Property Consultants, Inc. ("St. Clair" or "Plaintiff') filed a
patent infringement action against defendants Acer, JPc., Acer America Corporation, Dell Inc.,
i

Gateway Inc., and Lenovo (United States) Inc. on M~y 15, 2009, alleging infringement ofthe
i

1

patents-in-suit. (D.I. 1) On September 18, 2009, stJ Clair filed a second lawsuit against
defendants Apple, Inc., Toshiba Corporation, Toshib~ America Information Systems, and
Toshiba America, Inc. alleging infringement of the prtents-in-suit. (C.A. No. 09-704, D.I. 1)
I

Subsequently, on November 24, 2009, the Court con~olidated the two lawsuits. 2 (See D.I. 40)
On April 7, 2010, Microsoft Corporation ("~icrosoft") filed a lawsuit against St. Clair
I

seeking a declaratory judgment that it did not infringt any of the patents-in-suit. (C.A. No. 101

282 and, hereinafter, "the Microsoft Action," D.I. 1) On April 9, 2010, Intel Corporation
I

I

("Intel") moved to intervene in the St. Clair Action t~ seek a declaratory judgment that its
customers did not infringe the '617 patent. (D.I. 115) The Court granted Intel's motion to

i

1

Unless otherwise indicated, all citations to tlie docket refer to C.A. No. 09-354-LPS.
i

2

1

j

l

The consolidated cases will be referred to coJlectively as the "St. Clair Action."
I

1

I
I
i

!

intervene on June 4, 2010. (See D.l. 178) St. Clair shbsequently filed counterclaims against Intel
and Microsoft. (See D.l. 191; C.A. No. 10-282, D.l.

~)
i

Claim construction briefing was consolidated! in the St. Clair Action and the Microsoft
I

Action. (See D.l. 189)3 The parties completed briefipg on claim construction on February 11,
!

2011. (See D.l. 324) The Court held a Markman he4nng on March 15,2011. See Markman
Hr'g Tr., Mar. 15, 2011 (D.I. 357) (hereinafter "Tr."). After the Markman hearing, the Court
ordered supplemental claim construction briefing frofl1 the parties regarding certain disputed
I

terms. (See D.l. 346) This supplemental briefing w~s completed on March 25, 2011. (See D.l.
354)

B.

Overview of Technoloey

The patents-in-suit relate to ways in which a tomputer system can utilize various
i

techniques to achieve improved power conservation. I The '929, '959, '025, and' 175 patents
I

(collectively, the "Fung Power Management Patents'jt relate to a power conservation system
involving a plurality of modes of operation and are

d~rected to power management and
I

conservation for computer systems. The '163 patentlclaims a system bus communication
i

architecture that maximizes computer performance $d reduces power consumption by enabling
multiple devices, which may have multiple commun~cation protocols, to communicate over a
I

common bus. (See '163 patent col.3 ll.46-48) The

'bo patent is directed to power control for
I

pluggable expansion cards for personal computers thrt allow the computer system to interact

3

The Court will cite to the briefing filed in C.jA. No. 09-354-LPS even though claim
construction briefing was filed separately in the St. Qlair Action and the Microsoft Action.
The Fung Power Management Patents all st~ from the same parent patent, U.S. Patent
No. 5,296,635, share the same specification, and na,Je Henry Tat-Sung Fung as the inventor.
4

t

i
i

l

I

2

with various peripheral devices, such as wireless internet or cellular cards. (See '130 patent
abstract) The '617 patent is directed at conserving p~wer by data transfer operations during
I

1~.14-16)

periods of system inactivity. (See '617 patent co1.3

I
I

l

I

II.

LEGAL STANDARDS
"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
I

(Fed. Cir. 2005) (internal quotation marks omitted). ~onstruing the claims of a patent presents a
question oflaw. See Markman v. Westview Instrumerzts, Inc., 52 F.3d 967, 977-78 (Fed. Cir.
i

1995), aff'd, 517 U.S. 370, 388-90 (1996). "[T]herel is no magic formula or catechism for
I

conducting claim construction." Phillips, 415 F.3d

~ 1324.

Instead, the court is free to attach

I

the appropriate weight to appropriate sources "in

lig~t of the statutes and policies that inform
I

I
I
I

patent law." Id.

I

"[T]he words of a claim are generally given t~eir ordinary and customary meaning ...
i

[which is] the meaning that the term would have to al person of ordinary skill in the art in
question at the time of the invention, i.e., as of the

e~ective filing date of the patent application."
!

Id. at 1312-13 (internal citations and quotation mark~ omitted). "[T]he ordinary meaning of a
•

I
I

claim term is its meaning to the ordinary artisan afte~ reading the entire patent." ld. at 1321
I

(internal quotation marks omitted). The patent specifcation "is always highly relevant to the
claim construction analysis. Usually, it is dispositivt; it is the single best guide to the meaning of
a disputed term." Vitronics Corp. v. Conceptronic, lrzc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substaptial guidance as to the meaning of particular
I

claim terms," the context of the surrounding words ~fthe claim also must be considered.
3

I
Phillips, 415 F .3d at 1314. Furthermore, "[ o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of enlig~tenment ... [b ]ecause claim terms are
i

normally used consistently throughout the patent ... j" !d. (internal citation omitted).
I

It is likewise true that"[ d]ifferences among c~aims can also be a useful guide .... For
example, the presence of a dependent claim that adds[ a particular limitation gives rise to a
presumption that the limitation in question is not pre~ent in the independent claim." !d. at 131415 (internal citation omitted). This "presumption is 9specially strong when the limitation in
dispute is the only meaningful difference between ani independent and dependent claim, and one
party is urging that the limitation in the dependent cl4im should be read into the independent
I

claim." SunRace Roots Enter. Co., Ltd. v. SRAM Cotp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
!

It is also possible that "the specification may teveal a special definition given to a claim
I

term by the patentee that differs from the meaning it

~ould otherwise possess.

In such cases, the

I

inventor's lexicography governs." Phillips, 415

F.3~

at 1316. It bears emphasis that "[e]ven

when the specification describes only a single embo~iment, the claims of the patent will not be
I

read restrictively unless the patentee has

demonstrat~d

a clear intention to limit the claim scope

using words or expressions of manifest exclusion or testriction." Liebel-Flarsheim Co. v.

Medrad, Inc., 358 F.3d 898,906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481
I

F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "shouid also consider the patent's prosecution
I

history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is
"intrinsic evidence," "consists of the complete recor4 ofthe proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during the examination of the patent."

4

Phillips, 415 F .3d at 1317. "[T]he prosecution histocy can often inform the meaning of the claim

language by demonstrating how the inventor underst1od the invention and whether the inventor
I

limited the invention in the course of prosecution, mclking the claim scope narrower than it would
otherwise be." !d.
I

A court also may rely on "extrinsic evidence,'! which "consists of all evidence external to
I

I

the patent and prosecution history, including expert ~d inventor testimony, dictionaries, and
I

learned treatises." Markman, 52 F.3d at 980. For in*ance, technical dictionaries can assist the
court in determining the meaning of a term to those ~f skill in the relevant art because such
dictionaries "endeavor to collect the accepted meaniqgs of terms used in various fields of science
I

and technology." Phillips, 415 F.3d at 1318. In add*ion, expert testimony can be useful "to
I

ensure that the court's understanding of the technicali aspects of the patent is consistent with that
!

of a person of ordinary skill in the art, or to establish lthat a particular term in the patent or the
I

i

prior art has a particular meaning in the pertinent fiel~." !d. Nonetheless, courts must not lose
I

sight of the fact that "expert reports and testimony [ate] generated at the time of and for the
!

purpose oflitigation and thus can suffer from bias th~t is not present in intrinsic evidence." !d.
I
Overall, while extrinsic evidence "may be useful" to lthe court, it is "less reliable" than intrinsic
I

evidence, and its consideration "is unlikely to result ~n a reliable interpretation of patent claim
scope unless considered in the context of the

intrinsi~

evidence." !d. at 1318-19.

'

Finally, "[t]he construction that stays true to ~he claim language and most naturally aligns
with the patent's description ofthe invention will beJ in the end, the correct construction."
Renishaw PLC v. Marposs Societa 'per Azioni, 158 f.3d 1243, 1250 (Fed. Cir. 1998). It follows

that "a claim interpretation that would exclude the in(ventor' s device is rarely the correct

5

l

interpretation." Osram GmbHv. Int'l Trade Comm'n, 505 F.3d 1351,1358 (Fed. Cir. 2007).

III.

CONSTRUCTION OF DISPUTED TERMS 5

A.

"activity value" 6
I

Plaintiffs Proposed Construction: "A:numeric value associated with an activity."
Defendants' 7 Proposed Construction: l'A predetermined numeric value assigned to
a specific activity ofthe computer."

I

1

Court's Construction: "A numeric val}le associated with an activity."
The parties agree that the activity value must pe expressed as a number. (See D.l. 313 at
19; D.l. 315 at 4) Defendants contend that the activity value must also be "predetermined" and
associated with a "specific" activity, whereas Plaintiff contends there are no such limitations.
I

!
I

Additionally, the parties disagree over whether the

a~tivity

value is "associated with" an activity

or "assigned to" an activity.
First, the Court concludes that the activity va~ue does not need to be predetermined.
!
I

Every time that the term activity value is used in the

~laims,
I

except for claim 13 of the '1 75

patent, the term is already preceded by the word "predetermined." (See, e.g., '929 patent col.39

5

Many ofDefendants' arguments relate to thl' doctrine of prosecution history disclaimer.
At the Markman hearing, Defendants emphasized th t prosecution history can also be used to
simply aid in the interpretation of a claim term. (Tr. at 33 ("Really, there are two avenues in my
view to the use of prosecution history. One is through a disclaimer. . . . But there is also the use
of the prosecution history, just as a construction aid, ~o give definition to a term that is otherwise
lacking in a definition of a claim.")) In construing the disputed terms, the Court has considered
both uses of prosecution history.
!

6

This disputed term appears in claim 6 ofthe ''929 patent, claim 1 of the '959 patent, and
claims 1, 8, 13, 17, 20, 23, and 28 ofthe '175 patent:
7

"Defendants" will be used to refer to the following parties collectively: Acer, Inc., Acer
America Corporation, Dell Inc., Gateway Inc., Lenoto (United States) Inc., Apple, Inc., Toshiba
Corporation, Toshiba America Information Systems,: Toshiba America, Inc., Intel, and Microsoft.
6

l

ll. 7-1 0 ("a means for ... associating each of said pl~ality of activities with a predetermined
activity value") (emphasis added)) Accepting Defen~ants' proposal for activity value would
result in a "predetermined predetermined activity val~e," which is a redundant reading of the
claim language that the Court concludes is not correc~. Additionally, the fact that all except one
of the claims using the term activity value explicitly ~ontain a predetermined limitation implies
that omission of the word "predetermined" in claim ] 3 was intentional, as "when the inventor
I

wanted to restrict the claims ... he did so explicitly.'j Kara Tech. Inc. v. Stamps.com Inc., 582
F.3d 1341, 1347 (Fed. Cir. 2009) (refusing to importllimitation into term when some claims
I

expressly included "cryptographic key" and others diP not).
!

Second, the Court concludes that the activity ~alue does not need to be associated with a
!

"specific" activity. The claim language itself does nqt mention "specific" activities; rather, the
claims recite "associating each of said plurality of activities with a predetermined activity value.''
I

('929 patent col.3911.9-10) Defendants have not pro~ided persuasive evidence that the claims
!

contemplate a specific limitation for the term activit~ value and, thus, the Court declines to
impose the limitation Defendants propose.
Finally, the Court concludes that the activity yalue is associated with an activity. Each of
i
I

the claims describes an activity value as being "assoqiated with" an activity of the computer, and
none of the claims use the words "assigned to."

Alt~ough the specification, in describing one

embodiment, refers to activity values as being "assig~ed" to various computer activities (see id.
'
I

at col.3 11.6-1 0; id. at col.11 11.28-33), there is no "cl¢ar and unmistakable disavowal" in the
specification that compels importing the word "assig~ed" to narrow the scope of the claims, see

i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 84~-44 (Fed. Cir. 2010).
7

B.

"activity count" 8
Plaintiffs Proposed Construction: Thi~ term does not require construction.
However, if the Court does construe tlps term, it should be construed as "a
numeric accumulation of activity valu~s."
I
I

Defendants' Proposed Construction: "~ running sum of activity values. " 9
Court's Construction: "A running total of activity values."
As an initial matter, the Court concludes that ft must construe this term because the
parties do not agree on its meaning and their dispute ~ppears to be material. See 02 Micro Int'l

Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d

~351,

1361 (Fed. Cir. 2008) (stating

sometimes "the 'ordinary' meaning of a term does n1t resolve the parties' dispute, and claim
I

'

construction requires the court to determine what cla~m scope is appropriate in the context of the

I

patents-in-suit").
I
I

The Court's construction is supported by the plain language of the claims. Claim 6 of the
'929 patent and claim 20 of the '175 patent explicitl)l' use the word "adding" when discussing
I

accumulation ofthe activity count. 10 (See '929 pate* col.3911.15-20; '175 patent col.9311.47-

I

51) Additionally, claim 13 ofthe '175 patent recitesi"accumulating an activity count as the sum
of said activity values." (' 175 patent col.90 11.40-42i (emphasis added)

1

I

l

i

I

The Court's construction is also supported by the specification, which indicates that the

8

This disputed term appears in claim 6 of the 1'929 patent, claim 1 of the '959 patent, and
claims 1, 8, 13, 17, 20, 23, and 28 ofthe '175 patent~
At the Markman hearing, Defendants indica~ed that a construction that provided a
running "total" would be acceptable. (Tr. at 40 ("Bult running total I think would be fine .... "))
9

The Court's determination that accumulati~g involves adding is supported by the
dictionary definition of accumulating, which defines1 accumulating as involving addition. See
IEEE STANDARD DICTIONARY OF ELECTRICAL AND $LECTRONICS TERMS (3d ed. 1984) at 17.
10

8

numeric activity values are combined in an ongoing :fu.shion. (See '929 patent col.3 ll.11-16
("The power management software monitor forms anj activity measurement as a running total of
the function call numbers as the function calls are m~de. Whenever a function call is made
(either active or conservation), the power manageme*t software monitor algebraically adds the

I
'

function call number to accumulated value .... "))
The Court's construction is also supported by the prosecution history. During
prosecution of the '959 patent, the inventor distingui$hed the claimed invention from prior art by
stating that the claimed invention "maintains a stored activity count and adds and subtracts
values from the stored activity count in response to eyents in the computer system." (D.I. 288,
Ex. 28 at 10) (emphasis in original) The inventor ~her elaborated that adding function call
values with positive and negative signs is the equiv4ent of adding and subtracting these values.
(See id. at 9-1 0)

C.

"monitors/monitoring the activity l~vel [of the] computer system" 11
I

Plaintiffs Proposed Construction: N~ construction necessary. The Court should
apply the plain and ordinary meaningJ which is "monitoring or observing the
activity level of the computer."
Defendant's Proposed Construction: 'iEstimates whether the CPU and other
circuits are active or inactive based o~ a proxy or proxies for CPU and system
!
activity."

I

Court's Construction: No constructiob necessary. Plain and ordinary meaning.

I

1

i

The Court agrees with St. Clair that these terms should receive their plain and ordinary
!

meaning, as there has been no inventor lexicography, disavowal, or disclaimer that would justify

11

These disputed terms appear in claims 1, 6, 8, 9, 10, and 11 ofthe '929 patent, claims 1,
8, 12, 13, 16, 20, 23, and 28 ofthe '175 patent, claims 2, 7, and 17 of the '959 patent, and claims
1, 30, 33, 38, 42, 43, and 45 ofthe '025 patent.

9

a departure from the plain meaning as understood by ~ person having ordinary skill in the art.

See Thorner v. Sony Computer Entertainment Am.

L~C,

669 F.3d 1362, 1365-66 (Fed. Cir.

2012). The meaning of monitor, activity level, and c~mputer activity would all be readily
understandable to a jury and no further explanation of these terms is necessary. See Funai Elec.

l
1

I

1

I

Co., Ltd. v. Daewoo Electronics Corp., 616 F.3d 1357, 1366 (Fed. Cir. 2010) ("The criterion is
whether the explanation aids the court and the jury in~ understanding the term as it is used in the
claimed invention.").
Defendants' proposed construction improperly attempts to import limitations from the
specification into the claim language. See MBO Lab$., Inc. v. Becton, Dickinson & Co., 474 F.3d
1323, 1333 (Fed. Cir. 2007) (noting that "import[ing]limitations onto the claim from the
specification ... is fraught with 'danger"'). Defendapts argue that the patent's disclosure of two
I
I

separate components to monitor the computer activit)' level - a software monitor to track the
function calls and a hardware monitor to watch the b~s to determine data transfer activity over
certain ranges (see '929 patent col.2 ll.47-48; id. at c~l.5 ll.44-63)- demonstrates that the system
is not actually directly monitoring the computer's sy~tem activity, but instead relies on proxies
(the function calls and the bus) to estimate whether

tie computer is active or idle. However,
I

simply because the power management system uses ttwo different types of monitors that monitor
I

two different kinds of computer activities does not rJean that the system therefore monitors
'

"indirectly" or through the use of "proxies," as Defe4dants suggest. The system directly
monitors function calls and directly monitors data tr$sfers over the bus, both of which are
"computer activities."

10

D.

"activity monitor" 12

Plaintiffs Proposed Construction: "Computer hardware and/or software
configured to monitor or observe acti~ity of the computer."
Defendants' Proposed Construction: "~omputer hardware or software,
functionally and structurally distinct filom the CPU that observes activity of the
computer."
Court's Construction: "Computer hardware and/or software configured to monitor
or observe activity of the computer."
The parties agree that the construction of thi~ term should include "computer hardware"
or "software" and that the computer hardware and/or isoftware should be used to "observe
activity" of the computer. The parties disagree,

how~ver,

be "functionally and structurally distinct" from the

cpu.

as to whether the activity monitor must
Defendants contend it must be distinct,

whereas Plaintiff contends this distinction is unsuppqrted.
In order to support their construction, Defend1mts rely on statements that the inventor

made during prosecution of the '175 patent. 13 (See D.I. 315 at 9-10; D.I. 323 at 7-8; see also D.I.
289, Ex. 38 at 13 (wherein inventor distinguished present invention from prior art by noting that
"activity monitor" in prior art was "structurally and functionally within the CPU")) However, the
I

Court concludes that the prosecution history of the 'l7 5 patent does not rise to the level of an
explicit disclaimer of computer hardware or software located outside of the CPU for all of the
Fung Power Management Patents, as each of these patents disclose different levels of specificity

12

This disputed term appears in claim 1 of the '959 patent, claims 1, 6, 8, 9, and 11 of the
'929 patent, and claims 1, 8, 17, and 28 ofthe '175 patent.
13

Although in some instances Defendants have argued that the prosecution history may
not rise to the level of an explicit disclaimer, here, D~fendants insist that they can meet the higher
burden of a disclaimer. (See Tr. at 45-46)
11

concerning the claimed activity monitor. (See Tr. at 17-18 ("[T]he words 'activity monitor' was
used in a different context from one patent to anotherl")) Specifically, in the '929 patent, the
disclosed activity monitor is generic and does not spdcify whether it includes either a hardware
monitor or software monitor. ('929 patent col.37ll.l4-15) On the other hand, claim 1 of the
'175 patent provides for an activity monitor that idenfifies an activity as "idle" or "active" indicating that this claim at least includes a software tnonitor. (See' 175 patent col.87 11.14-28)
i

Thus, although the statements made in prosecution ofthe '175 patent may be relevant 14 to
understanding the meaning of the term "activity monitor" in all the Fung Power Management
Patents, such statements are not tantamount to a clerui and unmistakable disclaimer broadly
applicable to every claim of each of the patents in ligpt of the differing level of detail provided
regarding the claimed activity monitor. (A disclaimer has not been demonstrated even with
respect to the '175 patent itself.) Thus, Defendants ~ve failed to meet the high standard for
establishing a prosecution disclaimer. See Omega Eryg 'g, Inc. v. Raytek Corp., 334 F .3d 1314,
1325-26 (Fed. Cir. 2003) (stating that disclaimer "requires that the alleged disavowing actions or
statements made during prosecution be both clear and unmistakable").

E.

"powered modes"/"powered states" 15
Plaintiffs Proposed Construction: "A! mode or state wherein the computer
receives some amount or level ofpo~er."
Defendants' Proposed Construction: ''A mode or state that affects the power
supply in a way other than power adj4stments via clock control."

14

See, e.g., Microsoft Corp v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004)
("[T]he prosecution history of one patent is relevant to an understanding of the scope of a
common term in a second patent stemming from the 1same parent application.") (internal citations
omitted).
15

These disputed claim terms appear in claims 1, 6, 8, 9, and 11 ofthe '929 patent.
12

Court's Construction: "A mode or state wherein the computer receives some
amount or level of power."
The parties' dispute is focused on whether th~ claims include power adjustments via
clock control. The Court agrees with Plaintiff that cl~ck control is not disclaimed.
I

The Court's construction is supported primari~y by the specification, which indicates that
the power adjustments may in some instances be based on clock signals. The specification
explicitly provides: "This clock control allows the user to save power, for example, when
running non-computationally intensive applications .... " (!d. at col.15 11.64-65) Similarly, the
specification states that there are "timers" and that "OJf enabled, certain timers are triggered by
the transition to the ON state .... The DOZE timer ~s programmable from 1 to 15 seconds."
(!d. at col.17 ll.61-67) The abstract of the '929 pateqt describes the invention as using "coupling

of circuit power and clock signals ... to control pow~r consumption." (!d., abstract) The
specification indicates that the claimed invention reduces power consumption during periods of
inactivity "by reducing clock speeds or removing clocks." (!d. at col.3 ll.61-64)
The Court concludes that the inventor did not expressly disclaim power adjustments via
clock control. During prosecution of the '929 patent; in distinguishing the present invention
from the Smith patent, the inventor noted that Smith ~'merely reduces the clock rate to various
computer system components" in the "slow mode." (D.I. 288, Ex. 20 at 18) The inventor then
clarified that his discussion was targeted at demonstr~ting that Smith is an "all or nothing"
system with no "intermediate power states," whereas the invention claimed in the '929 patent
simply does not disclose "turning all of the computer system components on or off at the same
time." (!d.) Unlike Smith, in which power is "applied to essentially all components," the
inventor indicated that his claimed intermediate powered states contemplate turning off power to

13

specific computer components. (!d.) The inventor dip not indicate that his system did not also
use clock signals. A system in which the "intermediate" power supply mode is based solely on
clock signals is different than a system based on

I
J

l

I

1
j

cloc~

signals as well as other power

management techniques including, for example, turning the power off to a certain group of
devices. Because Fung did not relinquish the scope qfhis claims, Defendants' prosecution
disclaimer argument is unavailing. 16
F.

"a power switching circuit" 17

Plaintiffs Proposed Construction:
modes, states, or levels."

"El~ctrical

circuitry configured to switch power

Defendants' Proposed Construction:"~ plurality of memory cells associated with
each power mode connected to a swit4h through a multiplexer."
Court's Construction: "Electrical circ~itry configured to switch power modes,
states, or levels."
The Court's construction is supported by the plain language of the claims. Apart from
four claims in the '175 patent, the other claims in the! Fung Power Management Patents do not
contain any reference to memory cells. 18 Defendants, attempt to incorporate claim limitations
from certain claims of the '175 patent into the claims of the other Fung Power Management
Patents in violation of the doctrine of claim differenttation. See generally Kara Tech., 582 F.3d
Defendants also make the same argument ~ith respect to the Harper prior art reference.
(Tr. at 53-54 ("Mr. Fung tells us that the applicant hcis carefully examined Harper, and finds any
possible relevant teachings in Harper are clearly limi~ed to clock control and not to power
control.")) As with the Smith reference, the disting~shing factor is that Harper's power
management system is based only on reducing the clpck signal, whereas Fung's system
contemplates turning power off to various components in different power modes.
16

17

This disputed claim term appears in claims 1-4, 6, 8, 9, 11, and 12 ofthe '929 patent,
claims 2, 3, 5, 6, 8, 9, 11 and 12 of the '175 patent, aind claims 5 and 6 of the '959 patent.
18

Claims 2, 3, 4, 6, and 7 of the' 175 patent inr;:lude the term "memory cells."
14

at 1347 (determining that under doctrine of claim differentiation, different claim terms appearing
in related patents should be given different meanings).
Defendants' prosecution disclaimer argument is unavailing. Defendants insist that during
prosecution, in order to overcome the patent examiner's objection that the specification did not
support the power switching circuit limitation in the claims, Fung explained that the power
switching circuit was a specific structure that included "a plurality of memory cells associated
with each power mode connected to a switch through a multiplexer." (D.I. 313 at 15; see also
D.I. 288, Ex. 21 at 11-13) Indeed, Fung indicated that "in the disclosed embodiment," the power
switching circuit functioned by controlling switches to open or close the power supply to the
different computer components based on the different modes or states of computer activity. (See
D.I. 288, Ex. 21 at 11-12) While some embodiments include a multiplexer or a plurality of
memory cells (see, e.g., '929 patent col.37 ll.42-63 ('!Power switching circuit comprises ... a
power control signal multiplexer circuit.")), there is nothing in the prosecution history that
indicates that the term "power switching circuit" mu&t be a plurality of memory cells. Thus, the
Court finds in the prosecution history no clear unmistakable disavowal of claim scope. See

Omega, 334 F.3d at 1325-26.

G.

"predetermined group of the comp*ter system devices/circuits" 19
Plaintiffs Proposed Construction: No construction necessary. Plain and ordinary
meaning.
Defendants' Proposed Construction: 'jGroup of computer components to be
coupled to the power supply as select¢d by the power switching circuit."

19

These disputed claim terms appear in claims 1, 6, 8, 9, 10, and 11 of the '929 patent and
claims 5 and 6 of the '959 patent.
15

Court's Construction: No construction necessary. Plain and ordinary meaning.
The Court agrees with St. Clair that these terms should receive their plain and ordinary
meaning, as there has been no inventor lexicography, disavowal, or disclaimer that would justify
1

a departure from the plain meaning. See Thorner, 669 F.3d at 1365-66.
Defendants submit that the power switching circuit and, "in particular, its power
registers," select the computer components in a particular predetermined group. (D.I. 315 at 16)
Defendants' argument is based on the prosecution history, although Defendants do not contend
that the statements Fung made rise to the level of a d~sclaimer. (Tr. at 60 ("Again, it's not a
disclaimer, but it tells us what this predetermined grqup ought to be.")) Specifically, Defendants
rely on a statement that Fung made to the PTO distin~ishing his invention from the prior art:
"The eight bit power registers select which predeteiTilined group of devices will be active in the
associated power mode." (D.I. 288, Ex. 20 at 16-17),(emphasis added) Defendants contend that
this proves that the registers - which are allegedly a part of the power switching circuit - "select"
which computer devices will be within the predetennined groups. Additionally, Defendants
assert that this statement also indicates that "a structrp-e is necessary to create a predetermined
group of computer devices." (D .I. 315 at 16)
The Court finds Defendants' arguments unavailing. Fung's statement was made as part
of a much longer colloquy with the PTO, during whi¢h he distinguished his invention on the
basis that, unlike the prior art, his invention disclose4 three powered modes of operation, wherein
each mode corresponded to a different predetermined group of computer devices being connected
to the power supply. (See D.I. 288, Ex. 20 at 18-20) Fung's one statement during prosecution is
"far too slender a reed to support the judicial narrowing" of this claim term. N Telecom Ltd. v.

16

Samsung Elecs. Co., 215 F.3d 1281, 1294 (Fed. Cir. :WOO).
H.

"operating modes" 20

Plaintiffs Proposed Construction: No construction necessary as the term
"operating modes" is defined by each claim itself.
Defendants' Proposed Construction: "Power modes that have a plurality of
operating states."
Court's Construction: No construction necessary. Plain and ordinary meaning.
The Court agrees with St. Clair that this term !should receive its plain and ordinary
meaning, as there has been no inventor lexicography, disavowal, or disclaimer that would justify
a departure from the plain meaning. See Thorner, 669 F.3d at 1365-66.
Defendants' construction seeks to differentiate between modes and states; however, the
Court finds that the Fung Power Management Patent$ use the term "mode" and "state"
interchangeably and, thus, the two terms have the sarpe meaning. In support of their argument
that there is a meaningful difference between "modef and "states," Defendants cite to the
following portion of the prosecution history: "Therefore, a mode may refer to any one of several
states, and a state is a specific condition within the mode." (D.I. 288, Ex. 21 at 11) However,
the cited portion of the prosecution history (which is 'also contained in the specification) relates to
the "power conservation mode." (See '929 patent col.5 11.64-65) The term in dispute is not
"power conservation mode" but, instead, "operating tnode." When Fung discussed the operating
mode in the prosecution history, he said: "states or 111odes are described in the [s]pecification in
hierarchical manner in that there is a progression of power saving or energy conservation

20

This disputed term appears in claims 1, 30, 33, 37, 38, 42, 43, 45, and 48 ofthe '025
patent and claims 2, 7, and 17 of the '959 patent.
17

I
I

progressing from the ON state and the OFF state." (D.I. 288, Ex. 21 at 10) (emphasis added)
Thus, the prosecution history demonstrates that Fungused the terms modes and states
interchangeably when referring to the different conditions in which the system could operate.
The plain language of the claims also support$ the Court's conclusion that the term
"mode" and "state" are used interchangeably. Claim '1 of the '929 patent and claim 1 of the '025
patent bear strong similarities: the phrases "powered modes of operating" and "operating modes"
are similar, both in terms of the language they use and the three levels of power conservation that
the claims recite. (Compare '025 patent col.53 11.6-11 (stating that invention has "at least three
operating modes including a first-mode having a firs~ power consumption level, a second-mode
having a second power consumption level less than said first power consumption level, and a
third-mode having a third power consumption levell¢ss than said second power consumption
level"), with '929 patent col.3711.20-23 ("a state controller that has three powered modes of
operating, including afirst state, a second state, and a third state") (emphasis added)) It
appears that "this is simply a case where the patentee! used similar words to express similar
concepts." See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1120 (Fed. Cir. 2004); see also Inpro II Licensing, S.y4.R.L. v. T-Mobile USA, Inc., 450 F.3d
1350, 1355 (Fed. Cir. 2006) ("[D]escribing claim elements or limitations in different words does
not invariably change the scope of the claim.").

18

I.

"idle threads" 21

Plaintiffs Proposed Construction: 22 "The smallest or most elemental executable code
segments used in monitoring activity."
Defendants' Proposed Construction: 23 "The smallest or most elemental executable code
segments that receive function calls to the operating system that indicate inactivity."
Court's Proposed Construction: "The smallest or most elemental executable code
segments that indicate inactivity."
Defendants' initial proposed construction limhed idle threads to a DOS environment.
(See D.I. 315 at 18 (proposing construction of"independently executing software subroutines
that receive DOS idle function calls")) The Court haS determined that idle threads are not limited
to a DOS environment based on the plain language of claim 9 of the '025 patent, which
contemplates selection of operating systems other than just DOS. (See '025 patent col. 53 ll.5861 ("wherein said operating system is selected from tlhe group consisting of a multi-tasking
operating system, Microsoft Windows, Microsoft DQS, and combinations thereof'))
Defendants' initial construction improperly

attempte~

to import a limitation of a DOS

environment from the specification (see id. at col.3 11.3-9) into the claims of the '025 patent,
without any evidence that patentee "intend[ ed] for th~ claims and embodiments in the
specification to be strictly coextensive." JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d
1324, 1335 (Fed. Cir. 2005).
Based on the assumptions that the Court would conclude that idle threads are not limited
21

This disputed term appears in claims 42 and 48 of the '025 patent.

22

Plaintiffproposed this construction in its past-hearing supplemental brief. (See D.I. 349

at 1)
23

Defendants proposed this construction in thf;!ir post-hearing supplemental brief. (See
D.I. 350 at 1)
19

I
I

to the DOS environment, and that the term "thread" should be construed as the "smallest or most
elemental executable code segment,"24 the Court requested supplemental briefing from the
parties regarding the proper construction of the term

'~idle

threads." (See D.I. 346) The parties'

revised proposed constructions are shown above.
The Court's construction is supported by the plain language of the claims. (See '025
patent col.56 11.26-60; id. at col.57 1.40-col.58 1.39) The claim language does not require that the
idle threads receive function calls to the operating system, and, thus, the Court declines to limit
the claim scope as Defendants propose. However, the Court agrees with Defendants to the extent
that "indicate inactivity" is a proper way to define "idle," and, thus, the Court includes "indicate
inactivity" in its construction of this term.

J.

"clocking said CPU at a second frequency less than said first frequency or by
not maintaining clocking of said CFU" 25
Plaintiffs Proposed Construction: "Operating the CPU at a second frequency that
is less than the first frequency or by not maintaining the clocking of the CPU such
that the frequency is substantially reduced to zero."
Defendants' Proposed Construction: "Providing a clock signal to the CPU at a
second frequency that is less than the first frequency, or not providing a clock
signal to the CPU."
Court's Construction: "Providing a clock signal to the CPU at a second frequency
that is less than the first frequency, or not providing a clock signal to the CPU."

The Court's construction is supported by the claim language (see '025 patent, col.53
ll.32-35; id. at col.5611.11-14) and specification (see id. at col.3 11.62-63; id. at col.8 ll.l-2; id.

24

The Court's construction of the term "thread" is consistent with how the patentee
defined this term during prosecution of the '959 patent.
25

This disputed claim term appears in claims 1, 38, and 42 of the '025 patent and claims 2
and 7 of the '959 patent.
20

Fig. 3).
St. Clair expressed concern that Defendants' construction improperly mandated that the
clock signal be external to the CPU when, in St. Clair's view, the invention contemplates
operating the CPU "via an external or internal clock signal." (D.I. 324 at 18) However,
Defendants represent that their construction simply a•ms to clarify that "clocking" means
providing a clock signal regardless of whether the signal is generated internally or externally to
the CPU. (See D.I. 323 at 19) Thus, in the Court's view, Defendants' concession moots St.
Clair's concern.

K.

"special purpose buses each connected to the processor and to one of the
external devices and each operating at a different bus bandwidth
corresponding to the bus bandwidt» associated with the bus device to which
it is connected"26
1

Plaintiffs Proposed Construction: 27 "Buses connected to the processor and to a
corresponding external device through the common bus. Each bus transfers
signals through the common bus using a bus bandwidth associated with its
corresponding external device."
Defendants' Proposed Construction: 28 "Buses connected to the processor and to a
corresponding external device through the common bus. Each bus transfers
signals through the common bus using a bandwidth specific to its corresponding
external device."
Court's Construction: "Buses connected to the processor and to a corresponding
external device through the common bus. Each bus transfers signals through the
common bus using a bus bandwidth a$sociated with its corresponding external
device."

26

This disputed term appears in claims 1, 13, and 27 ofthe '163 patent.

27

Plaintiff proposed this revised construction in its post-hearing supplemental reply brief.
(See D.I. 353 at 2-3)
28

Defendants proposed this revised construction in their post-hearing supplemental brief.
(See D.I. 350 at 3)
21

This disputed claim term raises four different issues: ( 1) whether the "processor"
necessarily refers to the computer system's CPU, (2) whether the special purpose buses
communicate with the external devices "through" the common bus, (3) whether the special
purpose buses are separate and distinct, and (4) whether the term "bus bandwidth" would be clear
to a jury. The Court will address each issue in turn. 29

1.

Processor

Both parties effectively agree that a CPU is a particular type of processor. (D.I. 324 at
19) Defendants, however, argue that because St. Clair used the term processor interchangeably
with the CPU, processor must refer to the CPU. (D.I. 315 at 22; D.I. 323 at 21) The claim
language does not support Defendants' proposed limjtation. Defendants point to the following
statement in the '163 patent: "Processor 21 is functionally like static versions of conventional
CPU's such as Intel80CXXX processors .... " ('163 patent col.611.63-65) However, this
statement is referring to the "engine 10," which the patent later explains this way: "One preferred
!

embodiment of the engine 10 is based upon the components identified above . . . . However,
other components can be utilized in the present invention ... for other system compatibility."
(!d. at col. 7 11.26-30) Thus, the specification does not limit the embodiments to instances where

the processor refers solely to the CPU. Nor does the Court find Defendants' prosecution history
disclaimer argument persuasive.

29

The parties' initial proposed constructions raised these issues. After the Markman
hearing, the Court requested supplemental briefing from the parties regarding the proper
construction of this term based on the assumptions - which the Court now adopts - that ( 1) the
process recited in the claim term is not limited to the CPU, (2) each special purpose bus does not
need to be "separate and distinct," and (3) that the phrase "bus bandwidth" did not require
construction. (D.I. 346 at 2)
22

Accordingly, the Court's construction does not import Defendants' proposed CPU
limitation.

2.

"through the common bus"

Defendants also submit that the Court should import a limitation that the special purpose
buses must go "through" the common bus. (D.I. 323 at 20) The Court agrees. The Court's
construction is supported by the specification. (See id. at col. 7 ll.42-45 ("The reduction in I/0
pins is achieved for engine 10 of Fig. 1 by eliminating one or more special purpose buses that
exist in conventional small systems and in place ther~of providing a common bus 9 to serve all
common bus devices.")) The Court's construction is also supported by the prosecution history of
the '163 patent, during which the patentee distinguished prior art stating: "a distinguishing
feature over the prior art was the use of different timing parameters on a common bus located
intermediate the bus devices and corresponding

spec~al-purpose

buses." (D.I. 289, Ex. 48 at 1

(emphasis added); see also id. at 6 ("The independent Claims 1 and 6 have been amended to
specify that the common bus is located intermediate the bus devices and the special purpose
buses.")) Thus, the Court's construction clarifies that the common bus is located between the
external devices and the special purpose buses.

3.

"separate and distinct"

Defendants contend that a special purpose bus must be a separate and distinct bus that is
dedicated to a particular external device, while St. Clair contends there is no such requirement.
Defendants rely on the specification, which purportedly demonstrates that each external device
must have a "separate" bus. However, the sections of the specification on which Defendants rely
are inapplicable to this dispute, as these statements apply to conventional small system

23

architecture (see '163 patent col.2 11.63-66) whereas the patented invention is directed at
improving upon the architecture in those conventional small systems.
Likewise, the prosecution history does not support Defendants' reading as it merely
demonstrates that there may be separate special purpose buses internally on the chip (see D.I.
289, Ex. 48 at 4-5), which does not necessarily transl~te to each external device having a
"separate and distinct" corresponding special purpos~ bus that connects the CPU to the external
device.
Accordingly, the Court concludes that there is no requirement that the special purpose
buses be separate and distinct.

4.

"bus bandwidth"

The final dispute about this term relates to

ho~

information is transferred over the buses.

The claims recite that each special purpose bus opera:tes "at a different bus bandwidth
corresponding to the bus bandwidth associated with tihe bus device to which it is connected."
(' 163 patent col.22 11.35-38) The previous claim element provides that the external bus devices
have different timing parameters that "include

differ~nt

information transfer rates associated with

different bus bandwidths." (Id. at col.22 ll.32-33) Defendants seek to replace the words "bus
bandwidth" in the claim term with the phrase "information transfer rates." (D.I. 323 at 21)
However, when the patentee intended to use "different information transfer rates," he knew how
to do so. Defendants have not provided any persuasiwe reason that their construction is easier for
a jury to understand than bus bandwidth or otherwise helpful or more accurate.

24

Thus, the Court uses "bus bandwidth" in its construction. 30

L.

"common bus connecting the plurality of external bus devices to the plurality
of special-purpose buses" 31
Plaintiffs Proposed Construction: "A 'single common bus connecting the two or
more external bus devices to the two Qr more special-purpose buses."
Defendants' Proposed Construction: "A set of signal lines connected between the
external bus devices and the special p\llrpose buses and shared by the external bus
devices."
Court's Construction: "A set of signal lines connected between the external bus
devices and the special purpose buses ,and shared by the external bus devices."

As an initial matter, the Court concludes that it must construe the word "bus" within the
disputed term as "bus" is a technical term and, in light of the complex technology involved here,
construction is appropriate to assist the jury in understanding the meaning of the patent claims it
will be asked to consider. See Funai, 616 F.3d at 1366. The Court's construction of"bus" as "a
set of signal lines" is supported by extrinsic evidence- namely, the definition of "bus" from a
commonly used electrical terms dictionary. See IEEE STANDARD DICTIONARY OF ELECTRICAL
AND ELECTRONICS TERMS (3d ed. 1984) at 112 (defil)ing "bus" as "[a] signal line or set of signal
lines used by an interface system to which a number of devices are connected and over which
messages are carried"); see also Rambus Inc. v.

Infin~on

Techs., Ag., 318 F.3d 1081, 1094 (Fed.

Cir. 2003) (construing term "bus" consistent with foregoing definition).
The Court's construction, which explicitly states that the common bus is "shared" by the

30

The only difference between St. Clair's and Defendants' revised construction is whether
the bus bandwidth was "associated with" or "specific to" the corresponding external device. The
claim language uses the phrase "associated with," and the Court sees no reason that "associated
with" will be unclear to the jury.
31

This disputed term appears in claims 1, 13, and 27 of the '163 patent.
25

external bus devices, is supported by the specification. The specification explains that having a
common bus shared by several different bus devices is a critical point of the claimed invention.
(See' 163 patent col.5 ll.27-30 ("[T]he common bus 9 ... operates to serve the needs of all bus

devices without bus contention."); id. at col.611.5-7 e'[T]he total available bandwidth ofbus 9 is
shared between video, DMA and the rest of the common bus devices.") (emphasis added)) The

Court's construction is also supported by the prosecution history. (See D.I. 287, Ex. 5 at 16 ("In
the present invention ... the common bus 9 connected to all of the bus devices while no bus [in
prior art reference] connects to all bus devices."))

Al~hough

Defendants assert that each device

must communicate over the common bus one at a tin,.e (see Tr. at 85; D.I. 315 at 24) -which is
evidently what Defendants intend to convey by their proposed construction - the Court does not
agree that such a limitation is supported by the intrin$ic record and does not intend, by its
construction, to adopt such a limitation.

M.

"A data processing system comprisi~g a processor, .... a plurality of specialpurpose buses each connected to th¢ processor, ... and bus processing
means" 32
Plaintiffs Proposed Construction: "A data processing system that includes a
processor, a plurality of special-purpose buses each connected to the processor,
and bus processing means."
Defendants' Proposed Construction: '~The CPU, special purpose buses, and bus
processing means of claims 1 and 27 must be integrated on a single
semiconductor chip."
Court's Construction: "A data processing system that includes a processor, a
plurality of special-purpose buses each connected to the processor, and bus
processing means."

The parties dispute whether the CPU, special purpose buses, and bus processing means

32

This disputed claim term appears in claims 1 and 27 of the '163 patent.
26

must be integrated into a single semiconductor chip. The Court concludes that these components
do not need to be integrated into a single chip.
The Court's construction is supported by the IJ>lain language ofthe claims. (See '163
patent col.22 ll.25-46; id. at col.23 ll.43-65; id. at coL2611.1-19) Claim 13, which depends from
independent claim 1, adds to claim 1 the limitation that the processor, special-purpose buses,
common bus, and bus processing means are all integrated on a common semiconductor chip.

(See id. at col.23 11.50-51 ("[A] plurality of components for integration on a common
semiconductor chip, including .... ")) Under the doqtrine of claim differentiation, there is "a
presumption that an independent claim should not be~ construed as requiring a limitation added by
a dependent claim." Curtiss-Wright Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir.
2006). Here, then, there is a presumption that independent claims 1 and 27 do not include the
limitation contained in claim 13.
The Court's construction is also supported by the specification, which indicates that an
integrated computer system may be comprised of "a $mall number of semiconductor chips or ...
a single semiconductor chip." (See '163 patent col.2ll.42-46)
The Court's construction is further supportediby the prosecution history. Defendants
contend that during prosecution of the '163 patent, in order to overcome a prior art reference, the
inventor expressly indicated that the distinguishing fceature of his invention was that all of the
elements - the CPU, the special purpose buses, and the bus processing means - were contained
on a single chip. (D.I. 323 at 23; see also D.I. 289, Ex. 48 at 4) Defendants assert that this
prosecution history overcomes the presumption of claim differentiation. See Anderson v. Fiber

Composites, LLC, 474 F.3d 1361, 1370 (Fed. Cir. 2007) ("[T]he written description and

27

prosecution history overcome any presumption arising from the doctrine of claim
differentiation."). However, the Court concludes that there was no explicit disclaimer or
disavowal of claim scope during prosecution sufficiet1t to overcome the presumption of claim
differentiation. All of the prosecution history cited by Defendants involves the inventor
distinguishing prior art from claim 13, which explicitly requires all the components to be
contained on a single chip. (See D.I. 289, Ex. 48 at 7 ("As to claim 13, it was contended that it
would have been obvious to integrate all the components onto a single chip.")) The patent
'

examiner did not reject claims 1 or 27 as obvious, suggesting the examiner did not find these
claims to contain the "single chip" limitation of claim 13.
Moreover, when the inventor was distinguishing his invention from the prior art, he never
did so by stating that all the components in his invention were contained on a single chip; rather,
the inventor distinguished his invention on the grounds that it contained a common bus, which
resulted in a reduction in the number of semiconductor pins. During prosecution of the '163
patent the inventor stated:
An important feature of the present in!Vention and what

distinguishes the present applicationifrom all of the above
references is the fact that the special ~urposes buses ... are
subsequently all combined onto a si,.gle common bus ... .
Instead ofhaving a separate set ofbu$ lines for [special purpose
buses,] a single set ofbus lines is provided by common bus 9 ....
Thus the present invention provides a common bus capable of
supporting a plurality ofbandwidths.
(D.I. 287, Ex. 9 at 8) (emphasis added); see also D.I. 289, Ex. 48 at 1 ("[A] distinguishing feature
over the prior art was the use of different timing parameters on a common bus located
intermediate [to] the bus devices and corresponding special-purpose buses."); id. at 4 ("The
present invention ... provid[ es] a unique solution to reduce the number of pins. The various
28

buses for the various external devices having different timing parameters, are connected

internally to a common bus.") (emphasis in original)

N.

"power switching means for selecth(g one of said supply voltages as said card
voltage" 33
Plaintiffs Proposed Construction:
Function: "Selecting one of said supply voltages as said card voltage."
Structure: "power switches"
Defendants' Proposed Construction:
Function: "Selecting either the first supply voltage or the second supply voltage as
the card voltage."
Structure: "Power switches 12 configured to switch the selected supply voltage
onto the vee card line."
Court's Construction:
Function: "Selecting one of said
Structure: "power switches"

supp~y

voltages as said card voltage."

The parties agree that this term is a means-plus-function term within the meaning of 35
U.S.C. § 112 ~ 6; however, the parties dispute the proper function and structure.
The Court's construction of the function is supported by the plain language of the claims.
Each of the claims recites "a power supply for proviqing at least first and second supply
voltages." (See '130 patent col.611.31-32; id. at col.711.6-7; id. at col.711.26-27; id. at col.7
11.52-53; id. at col.8 11.7-8; id. at col.8 11.29-30; id. at ;col.8 11.64-65) Defendants' construction
ignores the words "at least" and implies that the syst¢m could have only two voltages - the first
supply voltage or the second supply voltage - which js contrary to the plain language of the
claims. The Court's construction of the function is also supported by the specification. (See id.
at col.3 11.1-15) The specification provides that power voltage levels may include "5 V, 3.3 V

33

This disputed term appears in claims 1, 6-10, and 12 of the '130 patent.
29

and x.x V." (!d. at col.3 11.1-3) This "x.x" variable

e~pressly

contemplates a level of voltage

different than either 5 or 3.3. 34 (!d. at col.lll.10-15)
The Court's construction of the structure is al$o supported by the specification. (See id. at
col.1 11.65-66; id. at col.2 1.65-col.3 1.20; id. at col.4 1~.25-27) The Court's construction captures
the fact that there can be a plurality of power

switche~,

and not just "power switch 12." (See id.

Fig. 1 (showing plurality of power switches)) The specification "disclose[s] adequate defining
structure to render the bounds of the claim understan~able to an ordinary artisan." Telcordia

Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1376 (Fed. Cir. 2010) (finding black box figures to
disclose sufficient structure for means-plus-function claim where "nothing in the figures
describes the details of its inner circuitry").

0.

"when the input data [at least a sub~et of the input data] has not been
recently updated" 35
·
Plaintiffs Proposed Construction: "\\1hen at least a part or portion of the input
data has not been recently updated, w]jlere 'recently updated' is defined to be the
end of a time duration or the reaching 'of another threshold value. " 36
Defendants' Proposed Construction: '~In response to the input data not changing
for a preset detection period, where th~ end of the period is defined to be the end
of a time duration or the reaching of another threshold value. " 37

34

The specification explicitly contemplates a 3.3 voltage level, as well as future voltage
levels that are below 3.3. The specification mention~ an "emerging standard" wherein a "voltage
less than 3.3 volts ... has been proposed." ('130 pa¢nt col.lll.10-13)
35

This disputed claim term appears in claims 1 and 17 ofthe '617 patent.

36

Plaintiff proposed this revised construction in its reply supplemental claim construction
brief. (See D.I. 353 at 3)
37

Defendants proposed this revised construction in their supplemental claim construction
brief. (See D.I. 350 at 4)
30

Court's Construction: "When the input data [at least a subset of the input data] has
not been recently updated, based on a time duration or the reaching of another
threshold value."
At the hearing, Defendants clarified some aspects of their proposed construction for this
term. Thereafter, the Court asked the parties for revised constructions, taking into account the
Defendants' representations at the hearing. (See D.I. 346 at 2) The parties' revised constructions
raise two disputes: (1) whether the system compresses data "in response to" the inactivity of the
display screen, and (2) whether the system requires a :"preset detection period" or, instead,
"recently updated" is sufficient. The Court conclude$ that the system does not necessarily
compress data "in response" to inactivity and that "retently updated" accurately explains the
triggering point at which the patented invention begims to compress data.
The Court's construction is supported by the plain language of the claims. (See '617
patent, col.11 1.62-col.121.12; id. at col.13 11.26-36) The claims themselves use the words
"when." The Court concludes that the meaning of"when" is unambiguous, would be easily
understood by a lay juror, and, consequently, does ndt require construction. Additionally, the
claims provide that when the input data has not been "recently updated," the system enters into a
mode in which it compresses data to save power. (See id. at col.12 11.4-8) The claims do not
provide any limitation on how the system will detennine whether or not the input data has been
recently updated or if that determination must be based on a "preset" detection period. Thus, the
Court declines to limit the claim language.
The Court's construction is also supported by the specification. The specification
mentions a "detection period" only once and, there, it is specifically contemplated that the
detection period may be set "adaptively" or "by users." (See id. at col.5 11.26-30) Contrary to

31

Defendants' arguments, having a detection period that is "adaptive" means that the period is not
preset but may change.

IV.

CONCLUSION
For the foregoing reasons, the Court will construe the disputed claim terms in the patents-

in-suit consistent with this Memorandum Opinion. & appropriate Order follows.

32