Fairchild Semiconductor Corporation et al v. Power Integrations Inc.
Filing
87
MEMORANDUM OPINION regarding claim construction. Signed by Judge Leonard P. Stark on 8/28/2013. (rpg)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
FAIRCHILD SEMICONDUCTOR
CORPORATION, and SYSTEM
GENERAL CORPORATION,
Plaintiffs,
C.A. No. 12-540-LPS
V.
POWER INTEGRATIONS, INC.,
Defendant.
John G. Day, Esq., Lauren E. Maguire, Esq., Andrew C. Mayo, Esq., ASHBY & GEDDES,
Wilmington, DE.
Blair M. Jacobs, Esq., Christina A. Ondrick, Esq., RoseS. Whelan, Esq., McDERMOTT WILL
& EMERY LLP, Washington, DC.
Terrence P. McMahon, Esq., McDERMOTT WILL & EMERY LLP, Menlo Park, CA.
Leigh J. Martinson, Esq., McDERMOTT WILL & EMERY LLP, Boston, MA.
Attorneys for Plaintiffs Fairchild Semiconductor Corporation, and System General
Corporation.
William J. Marsden, Jr., Esq., Joseph B. Warden, Esq., FISH & RICHARDSON, P.C.,
Wilmington, DE.
Frank E. Scherkenbach, Esq., FISH & RICHARDSON, P.C., Boston, MA.
Howard G. Pollack, Esq., Michael R. Hatley, Esq., Enrique Duarte, Esq., FISH &
RICHARDSON, P.C., Redwood City, CA.
Attorneys for Defendant Power Integrations, Inc.
MEMORANDUM OPINION
August 28, 2013
Wilmington, Delaware
STARK, U.S. District Judge:
Plaintiffs Fairchild Semiconductor Corporation and System General Corporation
(collectively, "Plaintiffs" or "Fairchild") filed this patent infringement action against Defendant
Power Integrations, Inc. ("Defendant" or "Power") on May 1, 2012, asserting three U.S. Patents:
(1) U.S. Pat. No. 7,259,972 ("the ' 972 patent"); (2) U.S. Pat. No. 7,525,259 ("the ' 259 patent");
and (3) U.S. Pat. No. 7,286,123 ("the ' 123 patent"). On June 21 , 2012, Power counterclaimed
for infringement of five U.S. Patents: (1) U.S. Pat. No. 6,229,366 ("the ' 366 patent"); (2) U.S.
Pat. No. 7,995,359 ("the ' 359 patent"); (3) U.S. Pat. No. 7,952,895 ("the ' 895 patent"); (4) U.S.
Pat. No. 7,876,587 ("the '587 patent"); and (5) U.S. Pat. No. 8,115,457 ("the '457 patent"). The
'972, '259, '366, '359, '895, ' 587, and '457 patents relate to aspects of switching power supply
regulators. The '123 patent relates to driver circuits for light emitting diodes.
Presently before the Court is the issue of claim construction of various disputed terms of
the eight patents-in-suit. The parties completed claim construction briefing on May 24, 2013.
(D.I. 59, 60, 69, 72) The Court conducted a Markman hearing on July 15, 2013. (See D.I. 86)
(hereinafter "Tr. ")
I.
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. A WH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a
question oflaw. See Markman v. Westview Instruments, Inc., 52 F.3d 967,977-78 (Fed. Cir.
1995), aff'd, 517 U.S. 370, 388-90 (1996). "[T]here is no magic formula or catechism for
conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach
1
the appropriate weight to appropriate sources "in light of the statutes and policies that inform
patent law." Id.
" [T]he words of a claim are generally given their ordinary and customary meaning ...
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
I d. at 1312-13 (internal citations and quotation marks omitted). " [T]he ordinary meaning of a
claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). The patent 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." Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.
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 enlightenment .. . [b ]ecause claim terms are
normally used consistently throughout the patent .. . ." Id. (internal citations omitted).
It is likewise true that " [d]ifferences among claims 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 present in the independent claim." I d. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp. , 336 F.3d 1298, 1303 (Fed. Cir. 2003).
2
It is also possible that "the specification may reveal a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor' s lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven
when the specification describes only a single embodiment, the claims ofthe patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v.
Medrad, Inc. , 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481
F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution
history, if it is in evidence." Markman , 52 F.3d at 980. The prosecution history, which is
"intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during the examination of the patent."
Phillips, 415 F.3d at 1317. " [T]he prosecution history can often inform the meaning ofthe claim
language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it would
otherwise be." Id.
A court also may rely on "extrinsic evidence," which "consists of all evidence external to
the patent and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises." Markman , 52 F.3d at 980. For instance, technical dictionaries can assist the
court in determining the meaning of a term to those of skill in the relevant art because such
dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science
and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to
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ensure that the court's understanding of the technical aspects of the patent is consistent with that
of a person of ordinary skill in the art, or to establish that a particular term in the patent or the
prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose
sight of the fact that "expert reports and testimony [are] generated at the time of and for the
purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id.
Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence." I d. at 1318-19.
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, 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 inventor' s device is rarely the correct
interpretation." Osram GmbH v. ITC, 505 F.3d 1351 , 1358 (Fed. Cir. 2007).
In this case, the Defendant contends that several disputed phrases are written in means-
plus-function format. Under 35 U.S.C. § 112, ~ 6:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
Courts follow a two-step process when construing "means-plus-function" claim terms. See Chi.
Bd. Options Exch. , Inc. v. Int 'l Sec. Exch. , LLC, 677 F.3d 1361 , 1367 (Fed. Cir. 2012). First, the
Court must identify the particular claimed function. See id. Second, the Court must look to the
specification and identify the corresponding structure for that function. See id. For the second
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step, "structure disclosed in the specification is ' corresponding' structure only if the specification
or prosecution history clearly links or associates that structure to the function recited in the
claim." B. Braun Medical v. Abbott Lab., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
II.
CONSTRUCTION OF DISPUTED TERMS
The parties seek construction of seventeen disputed terms. 1 The Court' s construction for
each disputed term is set forth below.
A.
U.S. Pat. No. 7,259,972
1.
"a second feedback signal associated with a current control loop"
[claims 1 and 15]
Plaintiffs' Proposed
Construction
No construction necessary because the Court has already provided
prior claim construction regarding this phrase: "a second feedback
signal, distinct from the first feedback signal, associated with a
current control loop"
Defendant's Proposed
Construction
"a second feedback signal, distinct from the first feedback signal,
associated with a current control loop wherein the current control
loop does not use a current limit comparator"
Court's Construction
"a second feedback signal, distinct from the first feedback signal,
associated with a current control loop wherein the current control
loop does not use a current limit comparator"
The Court construed this phrase in a previous litigation between the same parties. (See
CA. No. 08-309-LPS D.I. 212, 337) Plaintiffs propose that the Court simply adopt its previous
construction. (D.I. 60 at 4) Defendant, on the other hand, contends that the claim requires
further construction to account for disclaimers made by Plaintiffs during the subsequent
reexamination of the '972 patent. (D.I. 59 at 12) The Court agrees with Defendant.
1
The parties have also agreed on the meaning of certain claim terms. (Tr. at 198) The Court will
adopt the parties' proposed constructions for these terms.
5
" [S]tatements made by a patent applicant during prosecution to distinguish a claimed
invention over prior art may serve to narrow the scope of a claim." Spectrum Int 'l v. Sterilite
Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998). During reexamination, Plaintiffs sought to
overcome a rejection over the prior art by arguing that the term '" second feedback signal' is not
properly interpreted to include the conventional current limit circuit .... " (D .I. 51 Ex. E-1)
Plaintiffs also explained in the reexamination that the output of the current limit circuit "is
unrelated to the claimed second feedback signal associated with a current control loop." (Id.)
(citing ' 972 patent at col. 5, 11. 44-49) Given these clear and unambiguous statements, the Court
concludes that the disclaimer language integrated into Defendant' s proposed construction is
appropriate. See Omega Eng 'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-25 (Fed. Cir. 2003).
2.
"generates the first feedback signal by sampling a voltage from the
auxiliary winding of the transformer and a discharge time of the
transformer" [claim 6] and "generating the first feedback signal by
sampling a voltage from the auxiliary winding of the transformer and
a discharge time of the transformer" [claim 18]
Plaintiffs' Proposed
Construction
No construction necessary because the Court has already provided
prior claim construction regarding this phrase: "sampling a voltage
from the auxiliary winding of the transformer when the transformer
is discharging"
Defendant's Proposed
Construction
"the first feedback signal is generated by 'measuring and holding a
voltage from the auxiliary winding of the transformer at the end of
the discharge time'"
Court's Construction
"sampling a voltage from the auxiliary winding of the transformer
when the transformer is discharging"
This is another phrase that the Court has previously construed. (See CA. No. 08-309-LPS
D.I. 212, 337) Plaintiffs again propose that the Court adopt its previous construction. Defendant
proposes: (1) to construe the word "sampling" to mean "measuring and holding;" and (2) to
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clarify that sampling can only occur "at the end of the discharge time." The Court agrees with
Plaintiffs that the Court' s prior construction should be adopted again, without modification.
Defendant contends that the '972 patent specification requires the term "sampling" to be
limited to "measuring and holding." But the portions of the specification cited by Defendant
relate to a preferred embodiment. Defendant identifies no adequate "words or expressions of
manifest exclusion or restriction" that would demonstrate a disclaimer of scope. Liebel-
Flarsheim, 358 F.3d at 906.
Defendant also contends that "measuring and holding" the voltage signal is required in
order to generate the first feedback signal. (Tr. at 94) Plaintiffs disagree. (Tr. at 91-92) The
Court concludes that this is a factual dispute over infringement, appropriate for resolution by a
jury based on evidence and not by the Court at the stage of claim construction.
The Court also does not agree that sampling can only occur "at the end of the discharge
time," as Defendant proposes. The Court' s construction is supported by the specification. For
example, FIG. 2 ofthe ' 972 patent depicts sample signals VsPI and Vsp2 occurring throughout the
entire discharge time (Tos). Defendant concedes that sampling can occur throughout the entire
discharge time (Tr. at 98-99), but contends that voltage samples taken at the end of discharge
time are more accurate (Tr. at 96-98). While that may be true, it is not a basis to narrow the
scope of the claims.
7
B.
U.S. Pat. No. 7,525,259
1.
"means for regulating the power supply system" [claim 1]
Plaintiffs' Proposed
Construction
Not means-plus-function. Proposed Construction: "regulating
circuit"
Should the court find that 35 US. C. 112, 6 applies, Fairchild
proposes the following: The function is as recited in the claim. The
corresponding structure is control circuit 16 and feedback circuit 20
as depicted in Figures 1 and 2. The control circuit structure is
comprised of a power switch having a terminal which is connected
to winding 34 of transformer 18 and terminals for feedback voltage
for limiting peak drain current, as described in Col. 2: lines 59-61
and Col. 4: lines 37- 59. The corresponding structure for feedback
circuit 20 is diodes, capacitors, resistors and transistors, as described
in Col. 3:37-41.
Defendant's Proposed
Construction
"means for regulating the power supply system" is a means-plusfunction element.
The function is plain from the language of the claims, including the
language describing the related elements. The corresponding
structure for the control circuit is set forth in "control circuit 16"
shown in Figures 1 and 2 and described in the associated discussion
at 2:56-3:8 and 4:43-59; the corresponding structure for the
feedback circuit is set forth in "feedback circuit 20" shown in Figure
1 and described in the associated discussion at 3:23-4:32.
Court's Construction
"means for regulating the power supply system" is a means-plusfunction element
Function: "regulating the power supply system from the primary
side so that the current provided to the load at the output terminal is
substantially constant"
Structure: The corresponding structure for the control circuit is set
forth in "control circuit 16" shown in Figures 1 and 2 and described
in the associated discussion at col. 2, line 59 to col. 3, line 9 and col.
4, 11. 37-59. The corresponding structure for the feedback circuit is
set forth in "feedback circuit 20" shown in Figure 1 and described in
the associated discussion at col. 3, 11. 23-41 and col. 4, 11. 4-11.
The parties have two disagreements. First, the parties disagree whether this claim
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element is a "means-plus-function" limitation under 35 U.S.C. § 112(6). The parties also
disagree as to the specific structure that corresponds to the claimed function. 2
With respect to "means-plus-function" limitations, the Federal Circuit has explained that:
[u]se of the word "means" in claim language creates a presumption
that§ 112 ~ 6 applies. If, in addition to the word "means" and the
functional language, the claim recites sufficient structure for
performing the described functions in their entirety, the
presumption of§ 112 ~ 6 is overcome - the limitation is not a
means-plus-function limitation. Sufficient structure exists when
the claim language specifies the exact structure that performs the
functions in question without need to resort to other portions of the
specification or extrinsic evidence for an adequate understanding
of the structure.
TriMed, Inc. v. Stryker Corp. , 514 F.3d 1256, 1259-60 (Fed. Cir. 2008) (internal citations
omitted). In this case, the claim element includes the word "means," thereby invoking the
means-plus-function presumption. Thus, the question for the Court is whether the claim recites
sufficiently definite structure to perform the identified function and overcome the presumption. 3
The identified function includes at least "regulating the power supply system from the
primary side so that the current provided to the load at the output terminal is substantially
constant." According to the ' 259 patent, this regulating function provides "significant
advantages" over the prior art:
Power supply system 10 provides a constant output current to load
6, when the load voltage is lower than a certain value, using
primary side regulation. As such, power supply system 10 does not
require an optocoupler for feedback from the secondary side of
2
The parties' briefs do not expressly set out what they believe to be the appropriate function.
3
The means-plus-function analysis is performed from the standpoint of one skilled in the art. See
Inventio AG v. Thyssenkrupp Elevator Ams. Corp. , 649 F.3d 1350, 1357 (Fed. Cir. 2011). While
neither side identified the applicable level of skill in the art in its papers, at the hearing both sides
agreed that the dispute over this term does not tum on the level of skill in the art. (Tr. at 50, 56)
9
transformer 28. This reduces the cost of implementation, thus
providing significant advantages.
(col. 4, 11. 3 7-42) Claim 1 associates a "control circuit," a "feedback circuit," and a "power
switch" with the recited function. Plaintiffs contend that these three elements confer sufficient
structure to overcome the means-plus-function presumption. The Court disagrees.
Generic versions of a "control circuit," a "feedback circuit," and a "power switch" have
long been known in the art. The advantages associated with the invention of the ' 259 patent can
only result from the specific arrangement of components that make up these elements. One of
ordinary skill in the art would need to look to the specification in order to understand the
structure required to obtain those advantages. While the term "circuit" alone connotes some
structure, that structure does not overcome the means-plus-function presumption in this case. 4
The parties also disagree as to the specific structure that corresponds to the recited
function. Structure disclosed in the specification is only considered "corresponding" if "the
specification or prosecution history clearly links or associates that structure to the function
recited in the claim." B. Braun, 124 F.3d at 1424. In addition, " [w]hen multiple embodiments in
the specification correspond to the claimed function, proper application of§ 112, P 6 generally
reads the claim element to embrace each of those embodiments." Micro Chemical, Inc. v. Great
Plains Chemical Co., Inc., 194 F.3d 1250 (Fed. Cir. 1999).
In this case, the specification teaches that control circuit 16 "may be implemented on one
4
Plaintiffs' citations to Power Integrations, Inc. v. Fairchild Semiconductor Int 'l, Inc., 711 F.3d
1348, 1364 (Fed. Cir. 2013), Mass. Inst. ofTech. v. Abacus Software, 462 F.3d 1344, 1355 (Fed.
Cir. 2006), and Linear Tech. Corp. v. Impala Linear Corp. , 379 F.3d 1311 (Fed. Cir. 2004), for
the proposition that the word "circuit" connotes sufficient structure, are unavailing, because the
claim terms at issue in those cases did not use the word "means"- and, thus, did not invoke the
means-plus-function presumption.
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or more suitable integrated circuit (IC) devices with current control and current limiting
features ." ('259 patent at col. 2, line 65 to col. 3, line 1) One example ofthis IC is Fairchild's
FSDX321 chip. Plaintiffs provide no reason why the corresponding structure should not include
this chip.
With respect to the feedback circuit 20, this circuit has two parts: "One part of feedback
circuit 20 is associated with a steady-state condition of power supply system 10 until the output
voltage V ouT begins to drop; another part of feedback circuit 20 is used to enable or provide a
constant output current for system 10 after the output voltage VouT has begun to drop." (!d. at
col. 3, 11. 32-37) Plaintiffs propose to include only the structure associated with the steady-state
condition, but do not explain why the second part of the circuit should be excluded. Defendant,
on the other hand, includes the entire structure. The Court will adopt most of Defendant' s
proposal, eliminating the portions directed to the description of the feedback circuit's function.
2.
"the control circuit and the feedback circuit are operable to regulate"
[claim 1] and "the feedback circuit operable to support regulation by
the control circuit" [claims 8 & 13]
Plaintiffs' Proposed
Construction
Plain and ordinary meaning, no construction necessary.
If construction is necessary: "the feedback circuit and control circuit
work together to control the switching of the power switch"
Defendant's Proposed
Construction
"the feedback circuit and the control circuit cooperate to sense the
output and switch the power switch in response, so as to drive the
output toward a predetermined level"
Court's Construction
"the feedback circuit and the control circuit cooperate to sense the
output and switch the power switch in response, so as to drive the
output"
At the hearing, Plaintiffs agreed to a large portion ofDefendant's proposed construction.
(Tr. at 77) The only remaining disagreement is whether the output must be driven "toward a
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predetermined level," as Defendant proposes. The words "predetermined level" do not appear in
the specification. The portions of the specification cited by Defendant likewise do not require
driving the output to "a predetermined level." Accordingly, the Court will not include the
"predetermined level" requirement in the construction.
C.
U.S. Pat. No. 7,286,123
1.
"generating a LED current for controlling the LED" [claim 8]
Plaintiffs' Proposed
Construction
Plain and ordinary meaning, no construction necessary.
In the alternative, to the extent the Court deems construction
necessary: "producing at an output terminal of the control circuit a
current for the LED"
Defendant's Proposed
Construction
"producing at an output terminal of the control circuit the current
that flows through the LED for controlling the LED"
Court's Construction
"producing at an output terminal of the control circuit a current for
controlling the LED"
The parties' dispute regarding this phrase centers on the words "controlling the LED."
Defendant contends that controlling the LED requires "current [to] flow[] through the LED."
(D.I. 59 at 4) Plaintiffs believe that the LED can be controlled indirectly, for example, through
an auxiliary circuit. (Tr. at 11)
Defendant identifies a single sentence in the specification that refers to current "flow[ing]
through the LED." (D.I. 59 at 4) (citing ' 123 patent at col. 1, lines 13-15) This portion ofthe
specification, however, does not amount to a clear and unambiguous disclaimer of scope. The
related ' 090 patent cited by the Defendant also does not compel a narrowing construction. (D.I.
59 at 5)
Both parties rely on competing expert opinions in support of their positions. While
12
Defendant's expert contends that an LED cannot be controlled unless current flows through the
LED (D.I. 71
~
11), Plaintiffs' expert apparently disagrees (Tr. at 7-8). The Court concludes that
this is a factual dispute for the jury to resolve. Accordingly, the Court will adopt the agreed-to
portion of both parties' construction and will give the term "controlling" its plain and ordinary
meamng. At the hearing, Plaintiffs agreed to the construction the Court now adopts. (Tr. at 22)
2.
"a sense terminal of the control circuit, coupled to the LED for
detecting a LED voltage, wherein the LED voltage is coupled for
adjusting the LED current" [claim 8]
Plaintiffs' Proposed
Construction
Plain and ordinary meaning, no construction necessary.
In the alternative, to the extent the Court deems construction
necessary: "a sense terminal of the control circuit, connected to the
LED without a light sensor for detecting a LED voltage, wherein the
LED voltage is coupled for adjusting the LED current"
Defendant's Proposed
Construction
"the sense terminal is connected so that it measures the LED
voltage, where the LED voltage is distinct from the LED current,
and the LED voltage is coupled for adjusting the LED current"
Court's Construction
"the sense terminal is connected so that it detects a value of the LED
voltage, not the LED light output, where the LED voltage is distinct
from the LED current, and the LED voltage is coupled for adjusting
the LED current"
Following the Markman hearing, there is only one dispute between the parties with
respect to this term. (See Tr. at 43-45) Defendant contends that "the LED voltage is distinct
from the LED current," while Plaintiffs believe this additional limitation is not necessary. The
Court agrees with Defendant.
The Court's construction is supported by the intrinsic evidence. For instance, the claim
recites both an LED voltage and an LED current, and thus the "the general assumption is that
[these] different terms have different meanings." Symantec Corp. v. Computer Assocs. Int'l, Inc.,
13
522 F.3d 1279, 1289 (Fed. Cir. 2008). In addition, Plaintiffs do not dispute that the LED voltage
is "different" from LED current. (Tr. at 32-33) ("I think it very well could be distinct . .. They
are certainly different.") Defendant' s expert, Dr. Kelley, also explained that LEDs are "NonOhmic" and as such, there is no linear relationship between LED current and LED voltage. (D.I.
71
at~~
13-14) This further supports the conclusion that LED current is distinct from LED
voltage.
D.
U.S. Pat. No. 6,229,366
1.
"a soft start circuit means" [claims 1, 9, and 21]
Plaintiffs' Proposed
Construction
Not means-plus-function. Proposed Construction: "a circuit that
minimizes in rush currents at start up."
Should the Courtfind that 35 U.S.C. 112, 6 applies, Fairchild
proposes the following: The function is as recited in the claim. The
corresponding structure is softstart circuit 410 (latch 550,
comparator 460, and gate 455) shown in Figs. 3, 6, and 9 and
described at col. 6: 50- Col. 7:18.
Defendant's Proposed
Construction
"soft start circuit means" is a means-plus function element. The
functions of the soft start circuit are construed in accordance with
the plain meaning of the claims setting forth such soft start circuit
functions. The corresponding structures related to the soft start
circuit are shown in Figures 3, 6, and 9 of the '366 patent and
described in the specification of the ' 366 patent at 6:7-17; 6:357:18 ; 11:40-50; and 12:5-10.
Court's Construction
"Soft start circuit means" is a means-plus function element.
Function: The functions ofthe soft start circuit are construed in
accordance with the plain meaning of the claims setting forth such
soft start circuit functions.
Structure: The corresponding structures related to the soft start
circuit are shown in Figures 3, 6, and 9 of the '366 patent and
described in the specification ofthe ' 366 patent at col. 6, ll. 7-17;
col. 6, line 35- col. 7, line 18; col. 11 , ll. 40-50; and col. 12, ll. 5-10.
Power Integrations has previously asserted the ' 366 patent against Fairchild, including
14
claims that required a "soft start circuit." (See C.A. No. 04-1371-LPS) In the earlier case, this
Court construed the term "soft start circuit" as a means-plus function limitation, and the jury
returned a verdict of infringement against Fairchild. Fairchild appealed and the Federal Circuit
reversed the construction of"soft start circuit." See Power Integrations, 711 F.3d at 1364. The
Federal Circuit concluded that the claim contained sufficient structure to avoid the "soft start
circuit" being construed as a means-plus-function term. See id.
However, concurrent with the pendency of the Federal Circuit appeal, the '366 patent
underwent reexamination at the PTO. During reexamination, Power Integrations amended the
'366 patent claims to require a "soft start circuit means." (D.I. 63 Ex. 11) Power relied on this
amendment to overcome the Examiner' s rejection, and, subsequently, the claims were allowed.
The Federal Circuit did not consider the impact ofthe reexamination on the scope of this claim
term; it instructed this Court to do so on remand. See Power Integrations , 711 F.3d at 1366.
The parties dispute whether the amended "soft start circuit means" term should now be
construed as a means-plus-function claim element. Plaintiffs contend that the Federal Circuit's
opinion is controlling, as the Federal Circuit has already determined that the claim contains
enough structure to avoid a means-plus-function construction. Defendant responds that the
Federal Circuit opinion is not controlling because the claims have since been amended.
The Court agrees with Defendant. By amending the claim to include the word "means,"
and distinguishing the amended claim from the prior art on this basis, Defendant disclaimed the
broader (non-means-plus-function) interpretation. See ZMI Corp. v. Cardiac Resuscitator Corp. ,
844 F.2d 1576, 1580 (Fed. Cir. 1988) ("The prosecution history (or file wrapper) limits the
interpretation of claims so as to exclude any interpretation that may have been disclaimed or
15
disavowed during prosecution in order to obtain claim allowance."). Adopting Plaintiffs'
proposed construction would require the Court to ignore Defendant' s clear and unambiguous
disclaimer. Moreover, " [u]se ofthe word ' means ' in claim language creates a presumption that
§ 112 ~ 6 applies." TriMed, 514 F.3d at 1259-60. Because the original claims ofthe ' 366 patent
did not contain the word "means," this presumption did not previously apply to this term. See
Power Integrations, 711 F .3d at 1364 ("If a claim term does not use the word 'means,' we
presume that means-plus-function claiming does not apply."). The presumption does now apply
- and here it has not been overcome.
The parties also disagree regarding the specific structure that corresponds to the recited
function of the "soft start circuit means." The structure proposed by Defendant is the same
structure previously identified by this Court. Plaintiffs contend that Defendant's proposed
structure is overly broad, but do not explain where the Court erred in adopting this structure. The
Court will adopt Defendant's proposed structure.
2.
"An oscillator that provides a maximum duty cycle signal comprising
an on-state and an off-state" [claim 1]
Plaintiffs' Proposed
Construction
" An oscillator that provides a maximum duty cycle signal that is
Defendant's Proposed
Construction
"the oscillator determines the state of a signal that controls the
maximum on time of the switch in any given cycle"
Court's Construction
"the oscillator determines the state of a signal that controls the
maximum on time of the switch in any given cycle"
distinct from other signals, the maximum duty cycle signal having
an on-state and an off-state"
The dispute is whether the claim requires a "maximum duty cycle signal that is distinct
from other signals," as Plaintiffs propose. Plaintiffs contend that this additional language is
16
required because every embodiment in the specification shows a distinct maximum duty cycle
signal. (D.I. 72 at 12) However, "[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using words or expressions of manifest
exclusion or restriction." Liebel-Flarsheim , 358 F.3d at 906. Plaintiffs are unable to identify any
"words or expressions of manifest exclusion or restriction" in the specification. Without such
evidence of clear intent on the part of the patentee, it would be inappropriate to limit the claim to
a preferred embodiment.
E.
U.S. Pat. No. 8,115,457
1.
"a control circuit coupled to an input of a power converter" [1, 23,
and 29]
Plaintiffs' Proposed
Construction
"a control circuit connected to the input of the power converter such
that a voltage, current, or control signal passes to or from the control
circuit to the input of the power converter"
Defendant's Proposed
Construction
"a control circuit coupled to terminals for accepting unregulated
power for a power converter"
Court's Construction
"a control circuit connected to the input of the power converter such
that a voltage, current, or control signal passes to or from the control
circuit to the input of the power converter"
The parties' dispute centers on the appropriate construction for the phrase "an input of a
power converter." Defendant contends that this phrase refers only to input terminals for
accepting "unregulated" power. (D.I. 59 at 25) Plaintiffs dispute this limitation. The Court
agrees with Plaintiffs.
The specification supports the Court' s construction. According to the specification, the
invention "can be applied to any system coupled to a source of electrical energy where the
17
capacitance coupled between input terminals of the circuit poses a risk of electrical shock ifleft
charged when the source of electrical energy is uncoupled from the input to the system." ('457
patent at col. 16, 11. 19-23) The capacitor "coupled between input terminals" (which is what
causes the risk of electrical shock (Tr. at 167)) can be charged by any kind of electrical power
source- regulated, unregulated, AC, or DC. The specification explicitly states that an electrical
energy source "can be a de or ac source." ('457 patent at col. 1, 11. 26-27)
Defendant' s arguments for its position are unpersuasive. The word "unregulated" does
not appear in the specification. Additionally, the portions of the specification identified by
Defendant do not amount to a clear and unambiguous disclaimer of scope.
2.
"when the electrical energy source is uncoupled from the input of the
power converter" [claim 1]
Plaintiffs' Proposed
Construction
Plain and ordinary meaning, no construction necessary.
Or, in the alternative: "a capacitor having a first terminal connected
to a first one of the input terminals of the power converter and a
second terminal connected to a second one of the input terminals of
the power converter"
Defendant's Proposed
Construction
"at least one capacitor coupled between electrical terminals for
accepting AC input voltage"
Court's Construction
Plain and ordinary meaning, no construction necessary
The parties ' dispute over the phrase "when the electrical energy source is uncoupled from
the input of the power converter" is substantively identical to their dispute over "a control circuit
coupled to an input of a power converter." Under the circumstances, no construction beyond the
plain and ordinary meaning is necessary to resolve this dispute.
18
3.
"a capacitance coupled between input terminals of the input of the
power converter" [claims 23 and 29]
Plaintiffs' Proposed
Construction
Plain and ordinary meaning, no construction necessary.
Defendant's Proposed
Construction
"when the AC input connector of the power supply is unplugged"
Court's Construction
Plain and ordinary meaning, no construction necessary
Or, in the alternative: "when the electrical energy source is not
connected such that a voltage, current, or control signal passes to the
input of the power converter"
As with the previous term, the parties' dispute over the phrase "a capacitance coupled
between input terminals of the input of the power converter" is substantively identical to their
dispute over "a control circuit coupled to an input of a power converter." Under the
circumstances, no construction beyond the plain and ordinary meaning is necessary to resolve
this dispute.
F.
U.S. Pat. Nos. 7,952,895 and 7,995,359
1.
"render dormant the drive signal generator" [claim 1 of the '859
patent, and claims 1 and 29 of the '359 patent]
Plaintiffs' Proposed
Construction
"mode of operation where the drive signal generator is powered
down such that the drive signal generator is unresponsive"
To the extent unresponsiveness is not included in the definition of
the term, the term is indefinite.
Defendant's Proposed
Construction
"to place the drive signal generator into a reduced energy
consumption state"
Court's Construction
"to place the drive signal generator into a reduced energy
consumption state"
The parties have two disputes relating to this term. The first dispute is whether the words
"render dormant" require the drive signal generator to be "powered down," as Plaintiffs contend,
19
or simply put in a "reduced state of operation," as proposed by Defendant. The second dispute is
whether the words "render dormant" also require "the drive signal generator [to be]
unresponsive," as Plaintiffs contend. Defendant believes that this additional limitation is not
required. The Court agrees with Defendant on both disputes.
With respect to the "power down" issue, Plaintiffs correctly note that the only relevant
embodiment in both the '895 and '359 patents requires powering down the drive signal generator
when the drive signal generator enters the dormant mode. However, this is not a sufficient basis
to limit the claims as Plaintiffs request. Instead, generally, as the Federal Circuit has explained,
"[r]eferences to a preferred embodiment, such as those often present in a specification, are not
claim limitations." Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir.
1998). Unaware of any "expressions of manifest exclusion or restriction," the Court declines to
limit the claim to the preferred embodiment. See Liebel-Flarsheim, 358 F.3d at 906.
For the second dispute, the Court does not agree with Plaintiffs that the words "render
dormant" in the claim require "the drive signal generator [to be] unresponsive." The
"unresponsive'' limitation already appears separately in some, but not all, claims of the '895 and
'359 patents. Where a claim separately requires the drive signal generator to be "unresponsive,"
Plaintiffs' proposed limitation is not necessary. For the remaining claims, adopting Plaintiffs'
proposed construction would be inconsistent with the doctrine of claim differentiation. See
Phillips, 415 F.3d at 1315 ("[T]he presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in the independent
claim."). For example, independent claim 27 of the '895 patent does not include the
"unresponsive" requirement, while claim 28, which depends from claim 27, requires "the drive
20
signal generator and feedback circuit ... to be unresponsive to changes in the energy requirement
of the one or more loads when dormant ... ." Plaintiffs offer no persuasive reason to insert the
"unresponsive" requirement into every claim of the '895 and ' 359 patents.
Plaintiffs also contend that if their proposed "unresponsive" requirement is not adopted,
claims containing the disputed phrase will be rendered indefinite. The Court does not agree. A
claim is "sufficiently definite to inform the public of the bounds of the protected invention"
unless the term is "insolubly ambiguous." Halliburton Energy Servs. , Inc. v. M-1 LLC, 514 F.3d
1244, 1249-50 (Fed. Cir. 2008). Plaintiffs have failed to establish "by clear and convincing
evidence that a skilled artisan could not discern the boundaries of the claim based on the claim
language, the specification, and the prosecution history, as well as her knowledge of the relevant
art area." Id. at 1249.
2.
"power up the drive signal generator" [claim 1 of the '859 patent and
claims 1 and 31 of the '359 patent]
Plaintiffs' Proposed
Construction
Plain and ordinary meaning, no construction necessary.
Defendant's Proposed
Construction
"to restore the drive signal generator from a reduced energy
consumption state"
Court's Construction
"to restore the drive signal generator from a reduced energy
consumption state"
Or, in the alternative: "to provide power to the drive signal
generator
The parties agree that their dispute over the phrase "power up the drive signal generator"
should be resolved consistently with the term "render dormant the drive signal generator." (D.I.
69 at 20) Hence, for the reasons provided in connection with the preceding term, the Court
adopts Defendant's construction for the phrase "power up the drive signal generator."
21
G.
U.S. Pat. No. 7,876,587
1.
"current input circuit" [claim 10]
Plaintiffs' Proposed
Construction
"a circuit that receives a current and produces or generates an output
signal in response to the received current; a 'current input circuit'
does not include voltage dividers and other circuits that monitor
voltage"
Defendant's Proposed
Construction
"a circuit that receives a current and produces or generates an output
signal in response to the received current; a 'current input circuit'
does not include voltage dividers and other circuits that monitor
voltage, although a 'current input circuit' may receive a current that
is representative of a voltage"
Court's Construction
"a circuit that receives a current and produces or generates an output
signal in response to the received current; a 'current input circuit'
does not include voltage dividers and other circuits that monitor
voltage, although a 'current input circuit' may receive a current that
is representative of a voltage"
The parties largely agree to the appropriate construction for the term "current input
circuit." The only dispute is whether the phrase "although a 'current input circuit' may receive a
current that is representative of a voltage," proposed by the Defendant, should be included in the
construction. Defendant' s proposal reflects the construction adopted by the International Trade
Commission ("ITC") during litigation between the same parties. (D.I. 59 at 20) According to
the ITC, the "specification of the asserted patent shows that although a 'current input circuit'
should exclude voltage dividers and other circuits that monitor voltage, said 'current input
circuit' may receive a current that is representative of a voltage." In re Certain Power Supply
Controllers & Prods. Containing Same, Inv. No. 337-TA-541, USITC Pub. 3993,2008 ITC
LEXIS 773, 43-44 (May 1, 2008). Plaintiffs criticize Defendant's proposed construction as
"unnecessary" and contend that it will "only serve to confuse and mislead the jury." (D.I. 60 at
22
26) The Court is not persuaded that Defendant's construction is confusing or misleading and
will (like the ITC) adopt it.
2.
"current limit" (claims 10 and 13]
Plaintiffs' Proposed
Construction
"an external current limit"
Defendant's Proposed
Construction
"a prescribed threshold of current through a power switch, distinct
from the control circuit regulation threshold, such that when the
current through the power switch reaches this limit, the power
switch turns off to prevent the current from exceeding the threshold,
irrespective of the level of the control circuit regulation threshold"
Court's Construction
"a prescribed threshold of current through a power switch, distinct
from the control circuit regulation threshold, such that when the
current through the power switch reaches this limit, the power
switch turns off to prevent the current from exceeding the threshold,
irrespective of the level of the control circuit regulation threshold"
Plaintiffs contend that the "current limit" must be externally set. (D.I. 60 at 28)
According to Plaintiffs, the "specification repeatedly and only describes the current limit as being
set externally." (D.I. 60 at 27) Plaintiffs also contend that an externally set current limit
provides certain benefits, which are detailed in the specification. (!d.) However, the word
"external" does not appear in the claims, and nothing in the specification expressly precludes an
internal current limit. Indeed, the specification shows a current limit adjuster 313 (which
generates the current limit adjustment signal) that is internal to the current input circuit 302. (See
' 587 patent at FIG. 4) Given the absence of any language in the specification that would amount
to a clear disavowal of claim scope, the Court will not import the word "external" into the
claims.
The Court agrees with Defendant that the current limit must be "distinct from the control
23
circuit regulation threshold." The Court's construction is supported by arguments made by
Defendant during reexamination of a related patent, U.S. Pat. No. 6,351 ,398 ("the '398 patent").
The ' 398 patent has the same specification as the ' 587 patent, and the disputed term also appears
in the '398 patent claims. During reexamination of the ' 398 patent, Defendant argued that "using
a feedback signal for regulating peak current through the power switch .. . is different from
adjusting a current limit in the manner claimed." Defendant also explained that "setting a
maximum safe current limit ... is distinct from current mode feedback regulation." (D.I. 51 Ex.
E-4) The Court concludes that these arguments are a clear and unambiguous disclaimer of scope,
and that, as a result, Defendant has narrowed the scope of the claim to exclude current mode
control regulation. See Spectrum Int '1, 164 F .3d at 13 78 (" [S]tatements made by a patent
applicant during prosecution to distinguish a claimed invention over prior art may serve to
narrow the scope of a claim.").
Plaintiffs have not addressed the reexamination disclaimer. Instead, Plaintiffs contend
that Defendant' s proposed construction is improper because it would exclude the embodiment
illustrated in FIG. 2F. This argument is not persuasive for two reasons. First, the embodiment of
FIG. 2F is directed to "current mode control," which is the mode of operation disclaimed during
reexamination. Second, as Defendant explained, regardless of the Court' s construction for this
term, claim 10 cannot cover the embodiment of FIG. 2F due to additional limitations recited in
that claim. (See Tr. at 149-50)
24
3.
"current limit adjustment signal" [claims 10 and 13]
Plaintiffs' Proposed
Construction
"a signal that represents the externally set current limit"
Defendant's Proposed
Construction
"a signal that is used to adjust, or vary, the current limit value"
Court's Construction
"a signal that is used to adjust, or vary, the current limit value"
Plaintiffs propose to include the word "externally" in the construction of this term as
well. (D.I. 72 at 20) For the reasons provided with respect to the term "current limit," the Court
will adopt Defendant' s proposed construction.
4.
"dynamically adjust a current limit" [claim 10]
Plaintiffs' Proposed
Construction
"the current limit varies during operation of the power supply"
Defendant's Proposed
Construction
"the current limit may vary during operation of the power supply"
Court's Construction
"the current limit may vary during operation of the power supply"
The Court' s construction is supported by the intrinsic evidence. The term "dynamically
adjust a current limit" appears in claim 10, which is an apparatus claim. Apparatus claim 10
requires only that "the control circuit [be] coupled to dynamically adjust a current limit of a
current through a power switch in response to the current limit adjustment signal." The Court
agrees with Defendant that the term "coupled to dynamically adjust" is a term of capability,
requiring a current limit that is capable of being dynamically adjusted, rather than imposing a
mandatory duty to adjust at all times. (See Tr. at 165-66) Accordingly, the Court will adopt
Defendant's proposed construction.
25
III.
CONCLUSION
For the foregoing reasons, the Court will construe the disputed claim terms of the patents-
in-suit consistent with this Memorandum Opinion. An appropriate Order follows.
26
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