OPTi Inc. v. Silicon Integrated Systems Corp. et al
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 8/29/2014. (ch, )
Summer14!IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
VIA TECHNOLOGIES, INC. and VIA
TECHNOLOGIES, INC. (Taiwan),
CASE NO. 2:10-CV-00279-JRG
MEMORANDUM OPINION AND ORDER
Before the Court are the post-trial motions of VIA Technologies, Inc. and VIA
Technologies, Inc. (Taiwan) (collectively, “VIA”) (Dkt. Nos. 321, 322, 324, 325, and 326).
Having considered these motions and the briefings of the parties, the Court finds that each of
these motions should be DENIED, for the reasons set forth below.
BACKGROUND AND PROCEDURAL HISTORY
Plaintiff OPTi, Inc. (“OPTi”) filed this suit for patent infringement on July 30, 2010,
alleging infringement of U.S. Patent Nos. 5,710,906 (“the ‘906 Patent”) and 6,405,291 (“the ‘291
Patent”). Over the course of the litigation, OPTi dropped its allegations with respect to the ‘291
Patent. The case went to trial on the ‘906 Patent on May 28, 2013. Following a four-day trial, the
jury returned a unanimous verdict finding that VIA directly infringed claim 26 of the ‘906
Patent, and that VIA indirectly infringed claim 26 of the ‘906 Patent by inducing infringement
(Dkt. No. 274). The jury further found that claim 26 of the ‘906 Patent was not invalid, and
found damages in the amount of $2,111,905.40. Id. The jury also found that OPTi had not
proven willful infringement of the ‘906 Patent. Id. At the conclusion of the jury trial, the Court
held a bench trial on VIA’s defenses of laches and equitable estoppel, and denied those defenses
(Dkt. No. 303). The Court entered final judgment on September 9, 2013 (Dkt. No. 308).
The patent-in-suit is sometimes referred to by OPTi as a “Pre-Snoop Patent.” In general,
the patent relates to cache memory, which is a special, temporary memory that can be used, for
example, with a central processing unit (“CPU”). Reading data from the cache is faster than
reading data from main memory. The cache can thereby improve the performance of the CPU
and other devices. Some devices can access main memory without passing the data through the
CPU by using a feature known as Direct Memory Access (“DMA”). The terms “inquire” and
“snoop” both refer to checking for consistency between data in the cache and corresponding data
in main memory. If the data in the cache has been modified, then the corresponding data in the
main memory should be updated before that data in main memory is accessed, for example by a
DMA device. Devices communicate with each other, with memory, and with the processor over
one or more buses, such as the Peripheral Component Interconnect (“PCI”) bus.
The Abstract of the ‘906 Patent reads:
When a PCI-bus controller receives a request from a PCI-bus master to transfer
data with an address in secondary memory, the controller performs an initial
inquire cycle and withholds TRDY# to the PCI-bus master until any write-back
cycle completes. The controller then allows the burst access to take place between
secondary memory and the PCI-bus master, and simultaneously and predictively,
performs an inquire cycle of the L1 cache for the next cache line. In this manner,
if the PCI burst continues past the cache line boundary, the new inquire cycle will
already have taken place, or will already be in progress, thereby allowing the
burst to proceed with, at most, a short delay. Predictive snoop cycles are not
performed if the first transfer of a PCI-bus master access would be the last
transfer before a cache line boundary is reached.
The Court has previously construed the ‘906 Patent, and a description from a prior case will be
helpful and instructive:
The OPTi patents relate to “core logic” chipsets, the processors that direct traffic
between the central processor, memory, input/output devices, graphics cards,
video cards, and various other devices that are contained within, or connected to,
a computer. . . .
In the earliest days of computer processing, there were no core logic chipsets. The
central processor communicated directly with peripheral devices that made up the
computer. As computers got more complicated, chipsets were introduced as a way
of coordinating the burgeoning array of functionality and relieving central
processors of that administrative burden. This freed more CPU resources for the
fundamental mission of computing.
Broadly speaking, a typical chipset operates as an input/output (I/O) hub for the
CPU, memory, peripherals, etc. . . .
The links between the various devices comprising the computer, known as
interfaces, consist of conductors on which the devices transmit signals to one
another, communicating address, command, and data information. The most
common type of interface is known as a bus. The buses and interfaces allow the
various computer devices to exchange data and to operate in coordination with
The Pre–Snoop patent addressed a[n] issue that arose with the introduction of
the PCI bus and the subsequent development of the Pentium and Pentiumcompatible processors. One of the advantages of the PCI was its ability to transfer
data from one device to another by a particular method called “burst” transfers.
The Pre–Snoop patents disclose a technique for optimizing such burst transfers
with Pentium processors.
Data is stored, created or used at a lot of places in a computer. Each such location
is known as an address. For example, a memory storage device containing data to
be read (the “target”) cannot know that it is being asked to transfer data or what
data to transfer unless and until the requesting device (the “master”) puts an
address onto the bus notifying the target that it is the object of a request and
notifying the target what data is being requested. In a “burst” transfer, this
information is all that the target needs to figure out which data to transfer, as the
target dispatches data until the target is told to stop by the master or elects to stop
the transaction itself.
A complication arises in this scenario because much of the memory can be stored
in two places: main memory or cache memory. Cache memory is memory that
stores copies of information expected to be used by the CPU at addresses that
correspond to addresses for that information in secondary memory. This memory
typically operates at particularly high speed and is typically positioned adjacent to
the CPU. Access to the cache is thus generally quicker than access to the main
memory. This speeds up the CPU's ability to access and process the data that it
As the CPU processes data, it saves that data to the cache for continued
convenient access. The problem is that the CPU may well change the data that it
is processing. If that modified data is stored only in the cache, it will not be
identical to the data stored on, for example, the disk drive from which it was
initially read. Thus, if some other device—a CD drive, for example—accesses the
main memory to read data, it may get data that is no longer current.
In Intel's X86 line of CPU’s, the system solved this problem by using a “writethrough” cache. Basically, as data was modified by the CPU, it was written to
both the main and cache memories, thereby assuring constant “cache
consistency.” In the Pentium processors, the cache was a “write-back” cache. This
meant that the CPU did not take the time to write every modification through to
main memory. Instead, modified data was stored in the cache with a flag to
indicate its modified state. Thus, to read data from memory in a Pentium system,
it was necessary to adopt some mechanism to check for the presence of this flag,
to assure that the data in main memory was valid, and that the cache did not
contain a version of data that had been modified by the CPU.
The mechanism adopted was a “snoop.” For example, a bus master seeking to
initiate a transaction would first initiate an “inquire” or “snoop” cycle to the CPU
to find out whether the data being sought had been stored in cache memory in a
modified state and to “write back” the most current version of the data to the main
memory if a modification had been made.
The PCI standard required one “line” of cache memory to be snooped at a time,
and then permitted transfer of that line if the snoop showed it to be either absent
from the cache or in the cache but unmodified. The PCI protocol required that a
transfer stop at the end of each line transferred, snoop the next line, transfer the
line just snooped, and then stop again to snoop the succeeding line. Because burst
transfers could encompass any amount of data, including data stored in multiple
lines of memory, this practice resulted in a non-uniform transfer in which the bus
spent more time sitting idle than it did carrying data.
The sole exception to this rule was that multiple lines of memory could be read
without stopping when the data to be transferred was not cacheable. In this
instance, the snoop operation could be ignored because there was no risk of stale
data being accessed. Thus, the entire burst of data could be sequentially prefetched and read to the master without interruption.
The Pre–Snoop patent embod[ies] the idea that cacheable memory could be
transferred nearly as rapidly as non-cacheable memory if the snoop of a line were
conducted while the preceding line was transferring. In that way, as in the case of
non-cacheable memory, the system would know that the line was not stale and
there would be no need to stop the transfer at the end of the first line to snoop the
second line because that snoop would already be completed. The “snoop ahead”
process could be repeated as long as the burst transfer was underway so that all of
the data comprising the burst could be sent without interruption and at a constant
OPTi Inc. v. nVidia Corp., Case No..2:04-CV-377-TJW, 2006 WL 1133331, at *3-6 (E.D. Tex.
Apr. 24, 2006).
Claim 26 of the ‘906 Patent claims:
Apparatus for transferring data between a bus master and a plurality of memory
locations at respective addresses in an address space of a secondary memory, for
use with a host processing unit and a first cache memory which caches memory
locations of said secondary memory for said host processing unit, said first cache
memory having a line size of 1 bytes, comprising:
means for sequentially transferring at least three data units between said
bus master and said secondary memory beginning at a first starting memory
location address in said secondary memory address space and continuing
sequentially beyond a 1-bye boundary of aid secondary memory address space;
means for, prior to completion of the transfer of the first data unit beyond
said 1-byte boundary, determining whether an N+1’th 1-byte line of said
secondary memory is cached in a modified state in said first cache memory, said
N+1’th 1-byte line being the line of said secondary memory which includes said
first data unit beyond said 1-byte boundary,
said means for sequentially transferring, transferring all of said data units
at a constant rate.
(‘906 Patent 34:63-35:16). The accused products are VIA chipsets that the jury found infringed
the ’906 Patent.
In its post-trial motions, VIA petitions the Court for judgment as a matter of law (JMOL)
or, in the alternative, for a new trial, on the grounds that (1) The ‘906 Patent is invalid (Dkt. No.
322); (2) VIA did not literally infringe the ‘906 Patent (Dkt. No. 321); (3) VIA did not infringe
the ‘906 Patent under the doctrine of equivalents, or indirectly (Dkt. No. 324); (4) the Court
erred in its construction of the term “constant rate” in the ‘906 Patent (Dkt. No. 325); and (5) the
Court erred in instructing the jury regarding “equivalents” under 35 U.S.C. §112(6).
GENERAL LEGAL STANDARDS
Judgment as a matter of law is only appropriate when “a reasonable jury would not have
a legally sufficient evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a).
Procedural standards for JMOL flow from the law of the regional circuit. Finisar Corp. v.
DirectTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). The Fifth Circuit “uses the same
standard to review the verdict that the district court used in first passing on the motion.” Hiltgen
v. Sumrall, 47 F.3d 695, 699 (5th Cir. 1995). Thus, a jury verdict must be upheld, and judgment
as a matter of law may not be granted, unless “the facts and inferences point so strongly and
overwhelmingly in favor of one party that the court concludes that reasonable jurors could not
arrive at a contrary verdict.” Bellows v. Amoco Oil Co., 118 F.3d 268, 273 (5th Cir. 1997). The
jury’s verdict must be supported by “substantial evidence” in support of each element of the
claims. Am. Home Assurance Co. v. United Space Alliance, 378 F.3d 482, 487 (5th Cir. 2004).
In considering whether JMOL is appropriate, a court reviews all evidence in the record
and must draw all reasonable inferences in favor of the nonmoving party; however, a court may
not make credibility determinations or weigh the evidence, as those are solely functions of the
jury. See Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150-51 (2000); Med. Care
Am., Inc. v. Nat’l Union Fire Ins. Co., 341 F.3d 415, 420 (5th Cir. 2003).
Under Rule 59(a) of the Federal Rules of Civil Procedure, a new trial can be granted to
any party to a jury trial on any or all issues “for any reason for which a new trial has heretofore
been granted in an action at law in federal court.” Fed. R. Civ. P. 59(a). “A new trial may be
granted, for example, if the district court finds the verdict is against the weight of the evidence,
the damages awarded are excessive, the trial was unfair, or prejudicial error was committed in its
course.” Smith v. Transworld Drilling Co., 773 F.2d 610, 612-13 (5th Cir. 1985). The Court must
view the evidence “in a light most favorable to the jury’s verdict, and . . . the verdict must be
affirmed unless the evidence points so strongly and overwhelmingly in favor of one party that
the court believes that reasonable persons could not arrive at a contrary conclusion.” Dawson v.
Wal-Mart Stores, Inc., 978 F.2d 205, 208 (5th Cir. 1992).
VALIDITY OF THE ‘906 PATENT (Dkt. No 322)
If the ‘906 Patent is invalid, the Court need not reach the remaining issues of
infringement. Accordingly, the Court will address this issue first. VIA argues that claim 26 of the
‘906 Patent is invalid because (1) it was anticipated by VIA’s VT82C505 Chip (“the 505 chip”);
(2) the claim is indefinite under 35 U.S.C. § 112; and (3) the patent fails to meet the enablement
and written description requirements of 35 U.S.C. § 112.
A. Legal Standards
A patent is “presumed to be valid and invalidity must be proven by clear and convincing
evidence.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 704 (Fed. Cir.
2012). “A patent claim is anticipated if each and every limitation is found in a single prior art
reference.” Id. (citing 35 U.S.C. § 102). It is “axiomatic” that a device “which would literally
infringe if later anticipates if earlier.” Bristol-Meyers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1378 (Fed. Cir. 2001). With a claim element expressed as a means plus function,
“absent structure in a prior art reference which is capable of performing the functional limitation
of the means, the prior art reference does not meet the claim.” RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 144, 1444 (Fed. Cir. 1984). An accused device may infringe if it is
“reasonably capable of satisfying the claim limitations,” but does not infringe if “it does not
infringe in its normal configuration, even if it may be altered into an infringing configuration
under unusual circumstances.” Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.
Cir. 2001) (summarizing High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49
F.3d 1551, 1556 (Fed. Cir. 1995)). By analogy, then, in order to anticipate a patent claim, prior
art must be “reasonably capable” of meeting each and every claim limitation “in its normal
configuration”—absent “unusual circumstances.”
35 U.S.C. § 112 requires that a patent’s specification “conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the inventor or a joint
inventor regards as the invention.” Indefiniteness is “a legal conclusion that is drawn from the
court’s performance of its duty as the construer of patent claims . . . . a court may consider or
reject certain extrinsic evidence in resolving” indefiniteness disputes, but “the court is looking to
the extrinsic evidence to assist in its construction of the written document.” Exxon Research and
Eng’g Co. v. U.S., 265 F.3d 1371, 1376 (Fed. Cir. 2001) (abrogated on other grounds by
Nautilus, 134 S. Ct. 2120, 2124 (2014)). A patent is invalid for indefiniteness “if its claims, read
in light of the specification delineating the patent, and the prosecution history, fail to inform,
with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 134
S. Ct. at 2124.
35 U.S.C. § 112 also requires that “the specification shall contain a written description of
the invention, and of the manner and process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use
the same.” The enablement requirement “is satisfied when one skilled in the art, after reading the
specification, could practice the claimed invention without undue experimentation.” AK Steel
Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003).
Apart from the enablement requirement, the Federal Circuit has also identified a separate
written description requirement in § 112—the specification must contain “a written description
of the invention” in addition to the enablement description of “the manner and process of making
and using” the invention. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010).
This description must not merely define the outer boundaries of the claim, but must “reasonably
convey to those skilled in the art that the inventor had possession of the claimed subject matter
as of the filing date. Id. at 1351.
VIA first argues that the evidence at trial unambiguously establishes that its 505 Chip,
which predated the application date of the ‘906 Patent, could be configured in a manner that
would meet all the elements of claim 26 of the ‘906 Patent. VIA assumes that, if these facts are
uncontested, then it prevails as a matter of law. VIA has misapplied the legal standard for
anticipation, however: in order to invalidate the patent-in-suit, the 505 chip must have been
reasonably capable of operating in such a way as to meet each limitation of the ‘906 Patent.
Hilgraeve, 265 F.3d at 1343. If the 505 chip could only be cajoled into meeting the limitations of
the patent-in-suit under “unusual circumstances”—such as a directed, post-hoc attempt to
replicate certain conditions in order to avoid liability for patent infringement—then it does not
anticipate the ‘906 patent. See id.
A reasonable jury could easily have found that VIA’s evidence failed to establish by clear
and convincing evidence that the 505 chip was reasonably capable or practicing each limitation
of the ‘906 Patent. In particular, there is no evidence that normal operation of the 505 chip
provided for “transferring all of said data units at a constant rate” (‘906 Patent 35:15-16). Rather,
VIA demonstrated only that the 505 chip could, with considerable experimentation, be
configured in a manner that met each of the claim limitations (Dkt. No. 322, at 9-12). This
configuration was only demonstrated in 2001, when OPTi was in negotiations with VIA as to
licensing of its pre-snoop patents (Dkt. No. 322-5).
The jury heard evidence that the 505 chip, as configured “out of the box,” did not satisfy
the constant rate transfer limitation of the ‘906 Patent (Dkt. No. 342-1, at 117-18). OPTi
presented evidence that reproducing the constant rate limitation required choosing one of more
than a trillion different possible combinations of configuration settings. Id. at 115. Dr. Alan J.
Smith, one of OPTi’s expert witnesses testified that it would be “essentially impossible” that
anyone actually configured the 505 chip to meet the limitations of the ‘906 Patent prior to the
patent’s application date. More importantly, Dr. Smith testified that “there’s no indication that
anyone knew the proper register settings to obtain this behavior nor that they would be motivated
to find them . . . .” (Dkt. No. 342-2, at 124-25). In order to anticipate the ‘906 Patent’s
limitations, then, a person of ordinary skill in the art would have had to select the correct settings
from over a trillion possible combinations—without the disclosure provided by the patent itself.
OPTi likens VIA’s argument to an argument that “a specialized computer chip is
anticipated by a general purpose computer because the general purpose computer could have
been programmed to behave like the specialized one” (Dkt. No. 342, at 6). This Court agrees.
Without the disclosure provided by the ‘906 Patent, the 505 chip was not reasonably capable of
meeting the limitations set out in the ‘906 Patent. Ample evidence was presented in trial to this
effect, and the Court has no basis on which to overturn the jury’s verdict of no invalidity on this
VIA next argues that the Court should grant judgment as a matter of law that the ‘906
Patent is invalid because it is indefinite. Specifically, VIA argues that the means plus function
terms of claim 26 of the ‘906 Patent fail to identify a corresponding structure that would render
the term sufficiently definite under Biomedino, LLC v. Waters Techs., 490 F.3d 946, 948 (Fed.
The Court notes, as a preliminary matter, that this is not a motion for JMOL under rule
50(a), which requires that “a party has been fully heard on an issue during a jury trial.”
Indefiniteness is a matter of law, to be decided by the Court. Exxon, 265 F.3d at 1376. No
question of indefiniteness was presented to the jury, and the jury was not instructed on
indefiniteness. See Dkt. No. 295, at 18-56. The parties have already had an opportunity to present
arguments and evidence concerning indefiniteness at the Court’s Markman hearing, and the
Court has construed the disputed claims to be not indefinite (Dkt. No. 150, at 32, 39).
This portion of VIA’s motion must be treated, and charitably so, as a motion to
reconsider the Court’s Markman Order in light of evidence presented at trial. To prevail on a
motion for reconsideration, a party must “clearly establish either a manifest error of law or fact
or must present newly discovered evidence.” Ross v. Marshall, 426 F.3d 745 (5th Cir. 2005).
Such motions “cannot be used to raise arguments which could, and should, have been made
before the judgment issues.” Id. VIA has failed to demonstrate why the evidence it presented at
trial could not have been presented to the Court before or as a part of claim construction.
Moreover, by presenting its evidence at trial, rather than at the appointed time, VIA effectively
ambushes OPTi by using trial evidence—directed at issues presented to the jury—in support of
its already-resolved, purely legal arguments. OPTi cannot be expected to anticipate this line of
argument and rebut it at trial. 1
The Court thus finds that reconsideration of its decision is inappropriate here. VIA has
offered no new evidence that could not have been presented before the Court ruled on the issue
of indefiniteness. Even so, out of an abundance of caution the Court will note that it has read and
considered VIA’s arguments and finds them unconvincing on the merits.
VIA also advances a new argument, not presented during claim construction, that the
term “constant rate” is indefinite in light of Nautilus, 134 S. Ct. at 2124. Though that term may
be “amenable to construction” and not “insolubly ambiguous,” VIA argues, it does not inform a
person of ordinary skill in the art “with reasonable certainty” what is claimed (Dkt. No. 366, at
3). This argument is unavailing. Though the Court rejected both parties’ proposed constructions
for the term “constant rate,” it nonetheless had no trouble construing the term with specificity
(Dkt. No. 150, at 25).
VIA’s arguments regarding indefiniteness must therefore be rejected.
VIA cites the concurring opinion of Judge Dyk in Oakley, Inc. v. Sunglass Hut International,
316 F.3d 1331, 1347 (Fed. Cir. 2003), in support of the proposition that the Court should reopen
questions of claim construction in light of testimony offered at trial. That case, however, did not
squarely address the question here: Oakley examined the propriety of a grant of preliminary
injunction, and found that the Defendant had not proven at that stage of the proceedings that the
patent-in-suit was invalid. There is no indication in Oakley that, had the district court in that case
held a full Markman hearing and construed the patent-in-suit, the district court would be required
to revisit that ruling post-trial. The whole point of a Markman hearing is to “determine the
meaning of claim terms” for the duration of the district court’s case. Defendant’s objections to
the Court’s claim construction order are best taken up on appeal, rather than in post-trial
D. Written Description and Enablement
Finally, VIA argues that the ‘906 Patent fails to meet the Patent Act’s enablement and
written description requirements. First, VIA argues that the testimony of VIA’s expert, Mr. Joe
McAlexander, conclusively established that a person of ordinary skill in the art would not have
been able to implement the claimed invention because of a lack of description of certain signals
in the patent’s Figure 8, and because the “data path” limitation would require undue
experimentation (Dkt. No. 322, at 20-24). This testimony, however, was directly contradicted by
OPTi’s expert, Dr. Smith (Dkt. No. 322-18, at 130-132). The jury had ample evidence supporting
its reasonable conclusion that VIA did not prove by clear and convincing evidence that the ‘906
Patent was invalid for failure meet the written description and enablement requirements. The jury
clearly had evidence of opposing natures and obviously weighed the evidence such that it
accepted OPTi’s position and rejected VIA’s. This is the essence of the jury’s function.
Having concluded that each of VIA’s arguments regarding the validity of the ‘906 Patent
are unavailing, the Court finds ample evidence in the record supporting the jury’s finding that the
‘906 Patent is not invalid, and that finding must stand.
LITERAL INFRINGEMENT OF THE ‘906 PATENT (Dkt. No. 321)
VIA argues that the jury’s verdict of direct infringement is not supported by the evidence
at trial. First, it asks the Court to grant JMOL or declare a new trial on the basis that VIA did not
literally infringe the ‘906 Patent (Dkt. No. 321); VIA’s arguments on infringement under the
doctrine of equivalents and indirect infringement are filed in a separate motion (Dkt. No. 324).
The Court notes, as a preliminary matter, that a new trial or a JMOL of no direct infringement is
only required if VIA demonstrates that the evidence supports neither literal direct infringement
nor infringement under the doctrine of equivalents, since the Court must uphold the jury’s
verdict if it has any reasonable basis to do so from the evidence. See Section II, supra. The Court
will address VIA’s literal infringement arguments first.
A. First Cache Memory
VIA first argues that the evidence establishes that the accused products do not meet the
limitation of “determining whether an N+1’th 1-byte line of said secondary memory is cached in
a modified state in said first cache memory” (‘906 Patent 35:10-13) The Court construed the
term “first cache memory” to mean “the first level of cache memory, commonly referred to as L1
cache memory” (Dkt. No. 150, at 20). VIA argues that the representative processing units have
both an L1 and an L2 cache, and that the evidence shows that the accused chip products cannot
distinguish between modified states cached in the L1 cache and modified states in the L2 cache.
Presented with a “hit modified condition,” then, as the result of a snoop, the accused products
cannot determine whether the modified data is in the L1 or the L2 cache of the processor.
Accordingly, VIA argues, the accused products cannot “determin[e] whether” a line of memory
is “cached in a modified state in said first cache memory” (i.e., the L1 cache), as opposed to the
VIA’s argument misreads the “determining whether” limitation of the patent. The point
of the “determining whether” limitation is that the accused chip product must perform a snoop
that warns the chip if there exists change in the sought data that is cached in the L1 cache. In
other words, the limitation is satisfied if the following condition holds true for the accused
If there an N+1’th 1-byte line of said secondary memory is cached in a modified
state in said first cache memory, then the accused product is alerted.
VIA reverses the direction of this conditionality, arguing that the “determining whether”
limitation must distinguish between changes cached in the L1 cache and changes cached in the
L2 cache. Under VIA’s hypothetical reading, the limitation sets forth a different conditional:
If the accused product is alerted, then the N+1’th 1-byte line of said secondary
memory is cached in a modified state in said first cached memory.
This reading subverts the most reasonable reading of the patent, which involved snooping the
cache for changed data prior to the completion of the previous line of data transfer. The snoop’s
function is to determine whether modified data exists in the cache; the process of resolving
changes, in which the location of modified data becomes important, is outside the scope of claim
OPTi presented ample evidence at trial that the accused products snoop ahead to
determine whether the L1 cache contains a modified version of sought data, and that, if a
modification exists, a “hit end pound signal will signal that,” and that the L1 cache of the
representative products was snooped “to determine if it contains a version of a line of data that is
different from the version in secondary memory” (Dkt. Nos. 341-3, at 14; 341-2, at 90). The
evidence thus supports a finding by the jury that the accused products meet the “first cache
memory” limitation of claim 26.
The Court also notes that VIA had ample opportunity to advocate for a specific construction of
this claim element at its Markman hearing, and did not suggest a particular construction. VIA’s
newly-raised claim construction dispute thus comes without warning to OPTi, who reasonably
adopted the Court’s interpretation at trial and tailored its presentation of the evidence to that
B. “Host Processing Unit” and Similar Limitations
VIA next argues that the accused chip products themselves lack a “host processing unit,”
a “first cache memory,” and “secondary memory,” and thus do not meet the limitations of claim
26 of the ‘906 Patent. The relevant claim language claims an
[a]pparatus for transferring data between a bus master and a plurality of memory
locations at respective addresses in an address space of a secondary memory, for
use with a host processing unit and a first cache memory which caches memory
locations of said secondary memory for said host processing unit, said first cache
memory having a line size of 1 bytes, comprising . . . .
(‘906 Patent 34:63-35:2).
Obviously, by its terms the claimed apparatus need not itself contain a host processing
unit, a first cache memory, or a secondary memory. It need merely be designed for use with
those components, and meet the means plus function limitations that follow the “comprising”
term. Cf. STX, LLC v. Brine, Inc., 211 F.3d 588, 591 (Fed. Cir. 2000) (quoting Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997) (“‘[W]here a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or intended use for the invention,
the preamble is not a claim limitation.’”)). In this case, obviously, the components listed in the
preamble are limiting, inasmuch as the structures claimed must be designed for systems
comprising a host processing unit, a first cache memory, and a secondary memory in order for
the claim terms to make sense. It should be clear, however, that the claimed apparatus itself need
only communicate with these structures, rather than incorporate them into the body of the
apparatus. VIA’s argument thus stands on a misreading of the claims of the ‘906 Patent and is
not a proper ground for JMOL or new trial.
C. Equivalent Structure Analysis Under 35 U.S.C. § 112(6)
VIA next argues that JMOL or new trial is required because OPTi failed to present
sufficient evidence that the accused products contain structures that are “equivalent” under 35
U.S.C. § 112(6) to the corresponding structures identified by the Court for each of claim 26’s
means plus function terms. VIA argues that equivalence for the purpose of § 112(6) may only be
demonstrated by “side-by-side comparison of the corresponding structures and the structures of
[a]ccused [d]evices” (Dkt. No. 321, at 7).
The crux of the motion is the Federal Circuit’s “function-way-result” test, which the
Court set before the jury as one measure of the statutory equivalence required for a finding of
infringement. A structure in an accused product identified for purposes of a means plus function
term is equivalent if it performs a function that is identical to the function claimed, and it
performs that function in substantially the same way as the specified structure, with substantially
similar results. See Odetics, Inc. v. Storage Technology Corp., 185 F.3d 1259, 1267 (Fed. Cir.
The record is replete with evidence that structures in the accused products perform
functions identical to those specified in the two means plus function limitations of claim 26, and
that these structures perform the claimed functions in substantially the same way as the specified
structures, with substantially the same results. See Dkt. No. 341-2, at 157-62 & 173-82 (“means
for sequentially transferring . . .” limitation); id. at 162-67 & 182-89 (“means for . . . determining
. . .” limitation). OPTi’s expert witness dutifully identified the function, way, and result for each
of the means plus function limitations, and compared them to the accused products.
VIA argues that OPTi’s expert’s “way” analysis was insufficient to support a finding of
equivalence. Its argument is rooted in the assertion that proving equivalence under 35 U.S.C. §
112 requires a “way” analysis that entails “a detailed structural comparison of how the
corresponding and accused structures each operate to exactly perform the claimed function”
(Dkt. No. 321, at 10). VIA accuses OPTi of glossing over the “way” analysis with a “black box”
that obscures substantial differences between the specified structures and those used by the
accused products. Id.
VIA demands a level of specificity in OPTi’s “way” analysis that is unsupported by the
law. In Odetics, the Federal Circuit explicitly held that “a component-by-component analysis of
structural equivalence” is not required. 185 F.3d at 1268. Presented with clearly sufficient expert
testimony of equivalence, VIA cannot obtain JMOL simply by demanding another and further
level of specificity, much like a young child repeatedly asking a parent “but why” after each
successive explanation. VIA was free to and did cross-examine the testimony of OPTi’s expert to
expose flaws in his analysis, and to put on the testimony of its own witnesses. The jury, in its
turn, was free to credit each side’s testimony or not, and the Court finds no cause here to second
guess the jury’s findings or how they weighed this particular evidence. As stated above,
weighing competing evidence and selecting which they find most credible is the essence of the
jury’s function within our legal system. This Court will not infringe upon that function.
D. Internal PCI Bus
Finally, VIA argues that OPTi’s expert’s testimony failed to demonstrate that the accused
products transferred data over an internal PCI bus. On this point, VIA merely pits the testimony
of its own expert against the testimony of OPTi’s expert (Dkt. No. 321, at 27-28). The gist of this
argument seems to be that VIA’s expert’s testimony is derived from personal knowledge of the
accused products, and is thus more reliable than the testimony of OPTi’s expert, which draws
conclusions from documentary evidence. See Dkt. No. 341-2, at 190-200. All that need be said
about this argument is that the jury could reasonably have credited the testimony of OPTi’s
expert over the testimony of VIA’s expert. VIA’s argument must therefore be rejected.
INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS (Dkt. No.
Having determined that the jury’s verdict finding direct infringement could stand on a
finding of literal infringement, and that neither JMOL of no infringement nor a new trial is
required on this basis, it is not strictly necessary for the Court to address VIA’s petition for
JMOL of no infringement under the doctrine of equivalents (Dkt. No. 324). Out of an abundance
of caution, however, the Court will briefly address this issue.
VIA raises two arguments unique to the doctrine of equivalents. First, it alleges that,
because “snoops,” “pre-snoops,” and PCI bursts were known at the time of the invention, the
accused products (which use snoops, pre-snoops, and PCI bursts) are not “after-arising
technology,” and thus cannot infringe under the doctrine of equivalents. Here, VIA simply
misstates Federal Circuit law.
“Although an equivalence analysis under § 112 and the doctrine of equivalents are not
coextensive . . . and have different origins and purposes, their tests for equivalence are closely
related.” Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1310
(Fed. Cir. 1998). “Both § 112 and the doctrine of equivalents protect the substance of a
patentee’s right to exclude by preventing mere colorable differences or slight improvements from
Though VIA presented its doctrine of equivalents arguments in the same motion as its
arguments regarding induced infringement, the two issues are logically distinct and the Court
will address VIA’s inducement arguments in the next section.
escaping infringement . . . .” Id. The doctrine of equivalents, however, differs somewhat from
equivalence analysis under § 112(6). The doctrine protects patent holders in the event that
a variant of an invention may be developed after the patent is granted, and that
variant may constitute so insubstantial a change from what is claimed in the
patent that it should be held to be an infringement. Such a variant, based on afterdeveloped technology, could not have been disclosed in the patent.
Id. Technology that predates the invention thus does not infringe under the doctrine of
equivalents, if it is also substantially different under 35 U.S.C. § 112(6). Id. at 1311. That is to
say, an accused product may infringe under the doctrine of equivalents without infringing under
s 112(6), if and only if the “substantial difference” that takes the accused product out of §112(6)
liability stems from a new variant of the technology that, in light of the development of the
technology post-patent, is not substantial. It does not follow, however, that “[w]here . . . the
accused structures are not ‘after arising technology,’ the doctrine of equivalents is not available
(Dkt. No. 324, at 1). An accused product that does use an equivalent structure under § 112(6)
may obviously also infringe under the doctrine of equivalents.
The Court has already determined that the jury could have found that the accused
products contain structures equivalent to those claimed under § 112(6). This conclusion nullifies
VIA’s argument about after-arising technology, since the rule of Chiuminatta depends on the
assumption that there is no equivalence under § 112(6). This portion of VIA’s argument must
thus be rejected.
In addition to its arguments concerning after-arising technology, VIA raises several
arguments going to the sufficiency of OPTi’s evidence regarding the doctrine of equivalents.
These arguments rehash the arguments discussed above regarding OPTi’s §112(6) analysis. The
Court relies on its discussion above to demonstrate the sufficiency of OPTi’s function-way-result
VIA’s arguments regarding the doctrine of equivalents must thus be rejected.
INDUCED INFRINGEMENT (Dkt. No. 324)
Next, VIA argues that OPTi failed to produce sufficient evidence of specific intent to
support the jury’s finding of induced infringement (Dkt. No. 324). Its argument on this point can
be reduced to an assertion that the evidence demonstrates unequivocally VIA’s good-faith belief
that the ‘906 Patent was invalid. At trial, OPTi presented substantial evidence indicating that the
accused products infringe “out of the box” using their default settings; that VIA advertised the
infringing features of its products to customers; and that VIA’s customers use the accused
products to infringe (Dkt. No. 339-2, at 200-203). It is undisputed that VIA knew of the ‘906
Patent during the relevant infringement period and engaged in licensing negotiations. The jury
heard extensive evidence regarding these negotiations, VIA’s defense of invalidity, and the
reasonableness of that defense (e.g., Dkt. No. 292, at 69-125; Dkt. No. 294, 105-35). The jury
was instructed to consider whether VIA had a good-faith belief in the invalidity of the ‘906
Patent during its deliberations, as bearing on OPTi’s induced infringement claim. Evidently, the
jury nonetheless concluded that VIA was liable for induced infringement. The Court sees no
reason, given the evidence, to question the jury’s factual findings, and VIA’s arguments on
induced infringement requesting JMOL or a new trial must be denied.
Next, VIA argues that the Court erred in its construction of the term “constant rate,” and
that a new trial should be granted on this basis. For the reasons outlined in the Court’s claim
construction Order, the Court rejects VIA’s proposed construction of that term and reaffirms its
prior construction (Dkt. No. 150, at 25). Accordingly, the Court finds that its instructions to the
jury regarding construction of the term “constant rate” were correct, and VIA’s motion should be
VIII. EQUIVALENTS INSTRUCTION
Finally, VIA argues that the Court presented the jury with a faulty instruction on
equivalence under 35 U.S.C. § 112(6). The Court instructed the jury that
[a] structure may be found to be equivalent to one of the corresponding structures
I have defined as being described in the ‘’906 Patent if at the time the ‘906 Patent
issued a person having ordinary skill in the field of technology of the ‘906 Patent
either would have considered the differences between the corresponding
structures to be insubstantial or would have found the structures performed the
function in substantially the same way to accomplish substantially the same result.
(326-1, at 30-31). VIA takes issue with the use of “or” in this instruction, arguing that the Court
should have instructed the jury that the exclusive test for equivalence is insubstantial difference,
and that the function-way-result test is merely “a tool” for determining whether the insubstantial
differences test is met (Dkt. No. 326, at 2).
A motion for new trial on the basis of an erroneous instruction should be granted if the
charge creates “substantial and ineradicable doubt whether the jury has been properly guided in
its deliberations.” Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1353 (Fed. Cir. 2007)
(citing Hartsell v. Doctor Pepper Bottling Co., 207 F.3d 269, 272 (5th Cir. 2000)).
In Odetics, Inc. v. Storage Technology Corp., the Federal Circuit made clear that the
function-way-result test (or, in the § 112(6) context, the “way-result test,” since the function
must be identical)) is merely a gloss on the “insubstantial differences” test. 185 F.3d 1259, 1267
(Fed. Cir. 1999). There the Federal Circuit held that “[s]tructural equivalence under § 112 is
met only if the differences are insubstantial . . . that is, if the assertedly equivalent structure
performs the claimed function in substantially the same way to achieve substantially the same
The Court finds that its instruction is consistent with the law, and that its use of “or” does
not create substantial doubt about whether the jury was properly guided in its deliberations. The
“way-result test” is a gloss on the “insubstantial differences” test and was fairly presented to the
jury as such. VIA’s motion should be denied.
For the reasons set forth above:
1. VIA’s Renewed Motion for JMOL of No Literal Infringement (Dkt. No. 321) is
2. VIA’s Renewed Motion for JMOL of Invalidity (Dkt. No. 322) is DENIED;
3. VIA’s Renewed Motion for JMOL of No Infringement Under the Doctrine of
Equivalents (Dkt. No. 324) is DENIED;
4. VIA’s Motion for New Trial Based on Erroneous Claim Construction (Dkt. No. 325)
is DENIED; and
5. VIA’s Motion for New Trial Based on Erroneous Statutory Equivalents Instruction
(Dkt. No. 326) is DENIED.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 29th day of August, 2014.
UNITED STATES DISTRICT JUDGE
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