Sonrai Memory Limited v. Oracle Corp.

Filing 60

MEMORANDUM IN SUPPORT OF 59 CLAIM CONSTRUCTION ORDER. Signed by Judge Lee Yeakel. (jv2)

IL
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
SONRAT MEMORY LIMITED,

PLAINTIFF,

E
2022

C(k

§
§
§

1:22-C V-94-LY

§

v.

§
§

ORACLE CORPORATION,
DEFENDANT.

§
§
§

MEMORANDUM IN SUPPORT OF CLAIM CONSTRUCTION ORDER
Before the court is the above-referenced cause, which was transferred to this court from
the Waco Division of the United States District Court for the Western District of Texas on February
2, 2022.

On December 15, 2021, the Waco Division held a hearing to determine the proper

construction of the disputed claim terms in U.S. Patent No. 6,829,691 ("the '691 Patent"). Plaintiff
Sonrai Memory Limited ("Plaintiff') accuses Defendant Oracle Corporation ("Defendant") of

infringing various claims of the '691 Patent. Defendant filed an opening claim construction brief
(Doc #25), to which Plaintiff filed a responsive brief (Doc. #3 0), to which Defendant filed a reply

brief (Doc. #32). The parties additionally submitted a Joint Claim Construction Statement (Doe.
#38).1

Having considered the parties' arguments from the hearing and those presented in their

claim construction briefs, having considered the intrinsic evidence, and having made subsidiary
factual findings about the extrinsic evidence, the court will render a Claims Construction Order

concurrent with this memorandum. See Phillips

v.

AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.

2005) (en bane); see also Teva Pharm. USA, Inc.

v.

Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

Citations to the parties' claim construction briefs and Joint Claim Construction Statement
are to the Case Management/Electronic Case Files (Doe. #) and pin cites are to the pagination
assigned through ECF.
1

I.

OVERVIEW OF THE PATENT
The '691 Patent, titled "System For Compressing/Decompressing Data," was filed on June

28, 2002, and issued on December 7, 2004. At a high level, the '691 Patent discloses a system and

method for compressing/decompressing data using a memory controller. '691 Patent at 2:32-36;

4:66-5:1-10. Unlike conventional systems that transfer both compressed and uncompressed data
to and from compressionldecompression

logic via a single bus, the memory
MEMORY

controller of the '691 Patent transfers data

1QZ

CONTROLLER
2C3

via two or more data busses, as shown by
elements 135 in Figure 2 (right).

'691

,------"-----'..
[

IIIFLIF35

-j
I

Patent at 1:34-45; 4:3-10. The '691 Patent
teaches that "the effective rate at which the

r H[

Cornçi
Decomp.
Engine

1-fl--r135

data is transferred across the busses may be
doubled versus

conventional methods,

which may use a common bus for at least a

FIGURE 2

portion of the data transfer." Id. at 2:46-49. The Abstract of the '691 Patent states:
The present invention pertains to a system for performing data
compressionldecompression. The system may have a memory controller with
compression/decompression logic. A first memory array may be coupled to the
memory controller via a first bus and a second memory array may be coupled to
the memory controllervia a second bus. The system may also have logic for
directing the transfer of data from the first memory array via the first bus to be
processed by the compression/decompression logic and then transferred to the
second memory array via the second bus.

There are three disputed claim terms. Independent claims

with the disputed terms in italics:

2

1

and 21 are reproduced below

1.

A system for compressing/decompressing data, comprising:

a memory controller having compression/decompression logic;
a first memory array coupled to said memory controller via a first bus;

a second memory array coupled to said memory controller via a second bus; and
logic for directing transfer of data from said first memory array via said first bus to
be processed by said compression/decompression logic and then transferred to
said second memory array via said second bus.
21. A system for compressing/decompressing data, comprising:

a memory controller having compression/decompression logic;

said compression/decompression logic having an input and an output;
a plurality of busses coupled to said memory controller, said busses having memory
coupled thereto;

selection logic coupled to said plurality of busses and to said
compression/decompression logic, said selection logic for selecting and
coupling a first of said busses to said compression/decompression input and
further for selecting and coupling a second of said busses to said
compression/decompression output; and
said system configured to transfer a first portion of data from a first memory
location in said memory via said first bus to said input while transferring a
second portion of said data to a second memory location in said memory via
said second bus from said output.

II.

LEGAL PRINCIPLES
A.

Claim Construction

"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to
which the patentee is entitled the right to exclude." Phillips

v. A WHCorp.,

(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc.

v.

Safari Water Filtration Sys., Inc.,

381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning

considering the intrinsic evidence. Id. at 1313; CR. Bard, Inc.
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc.
1258, 1267 (Fed. Cir. 2001).

v.

415 F.3d 1303, 1312

v.

of the claims, courts start by

US. Surgical Corp., 388 F.3d

Covad Commc 'ns Grp., Inc., 262 F.3d

The intrinsic evidence includes the claims themselves, the

specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
3

861. The general

rulesubject to certain specific exceptions discussed infrais that each claim

term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 13 12-13; Alloc, Inc.
Networks, LLC

v.

v.

Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure

CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks omitted)

("There is a heavy presumption that claim terms carry their accustomed meaning in the relevant
community at the relevant time.") cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).

"The claim construction inquiry
the claim." Renishaw PLC

v.

.

. .

begins and ends in all cases with the actual words of

Marposs Societa 'per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).

"[I]n all aspects of claim construction, 'the name of the game is the claim." Apple Inc.

v.

Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)) overruled on other grounds by Williamson

v.

Citrix Online, LLC, 792 F.3d

1339 (Fed. Cir. 2015). First, a term's context in the asserted claim can be instructive. Phillips,

415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim's

meaning, because claim terms are typically used consistently throughout the patent.

Id.

Differences among the claim terms can also assist in understanding a term's meaning. Id. For

example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314-15.

"[C]laims 'must be read in view of the specification, of which they are a part." Phillips,
415 F.3d at 1314-15 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc)).

"[T]he specification 'is always highly relevant to the claim construction

analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."
Id. (quoting Vitronics Corp.

v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex,

Inc.

v.

FicosaN. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee

may define his own terms, give a claim term a different meaning than the term would otherwise

possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations,
the inventor's lexicography governs. Id.
The specification may also resolve ambiguous claim terms "where the ordinary and

accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
the claim to be ascertained from the words alone."

Teleflex, Inc., 299 F.3d at 1325.

But,

"[a]lthough the specification may aid the court in interpreting the meaning of disputed claim
language, particular embodiments and examples appearing in the specification will not generally
be read into the claims." Comark Commc'ns, Inc.
Cir. 1998) (quoting Constant

v.

v.

Harris Corp., 156 F.3d 1182, 1187 (Fed.

Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.

1988)); see also Phillips, 415 F.3d at 1323. "[I]t is improper to read limitations from a preferred

embodiment described in the specificationeven if it is the only embodimentinto the claims
absent a clear indication in the intrinsic record that the patentee intended the claims to be so
limited." Liebel-Flarsheim Co.

v.

Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

The prosecution history is another tool to supply the proper context for claim construction

because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office ("PTO") and the inventor understood the patent. Phillips, 415 F.3d at 1317.

However, "because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the

specification and thus is less useful for claim construction purposes." Id. at 1318; see also Athletic
Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history

may be "unhelpful as an interpretive resource").

5

Although extrinsic evidence can also be useful, it is "less significant than the intrinsic
record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a

court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert

testimony may aid a court in understanding the underlying technology and determining the

particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported
assertions as to a term's definition are not helpful to a court. Id. Extrinsic evidence is "less reliable
than the patent and its prosecution history in determining how to read claim terms." Id. The
Supreme Court has explained the role of extrinsic evidence in claim construction:

In some cases, however, the district court will need to look beyond the patent's
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art during
the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be "so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning"). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
"evidentiary underpinnings" of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm., 574 U.S. at 33 1-32.

B.

Departing from the Ordinary Meaning of a Claim Term

There are "only two exceptions to [thej general rule" that claim terms are construed

according to their plain and ordinary meaning: "1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either

in the specification or during

prosecution."2

1362, 1365 (Fed. Cir. 2014) (quoting Thorner

Golden Bridge Tech., Inc.
v.

v.

Apple Inc., 758 F.3d

Sony Comput. Entm'tAm. LLC, 669 F.3d 1362,

1365 (Fed. Cir. 2012)); see also GE Lighting Sols., LLC

v.

AgiLight, Inc., 750 F.3d 1304, 1309

(Fed. Cir. 2014) ("[T]he specification and prosecution history only compel departure from the

plain meaning in two instances: lexicography and disavowal.").

The standards for finding

lexicography or disavowal are "exacting." GE Lighting Sols., 750 F.3d at 1309.
To act as his own lexicographer, the patentee must "clearly set forth a definition of the

disputed claim term," and "clearly express an intent to define the term." Id. (quoting Thorner, 669

F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee's lexicography must appear

"with reasonable clarity, deliberateness, and precision." Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee's statements in the

specification or prosecution history must amount to a "clear and unmistakable" surrender. Cordis
Corp.

Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366

v.

("The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a
claim term by including in the specification expressions of manifest exclusion or restriction,

representing a clear disavowal of claim scope."). "Where an applicant's statements are amenable
to multiple reasonable interpretations, they cannot be deemed clear and unmistakable." 3M

Innovative Props. Co.

III.

v.

Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

LEVEL OF SKILL IN THE ART
It is well established that patents are interpreted from the perspective of one of ordinary

skill in the art. See Phillips, 415 F.3d at 1313 ("[T]he ordinary and customary meaning of a claim
Some cases have characterized other principles of claim construction as "exceptions" to
the general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
2

7

term 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."). The Federal

Circuit has advised that the "[fjactors that may be considered in determining the level of skill in
the art include: (1) the educational level of the inventors; (2) the type of problems encountered in

the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made;
(5) sophistication of the technology; and (6) education level of active workers in the field."

Environmental Designs, Ltd.

v.

Union Oil Co.

of California,

713 F.2d 693, 696 (Fed. Cir. 1983).

"These factors are not exhaustive but are merely a guide to determining the level of ordinary skill
in the art." Daiichi Sankyo Co. Ltd.

v.

Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).

The parties dispute the qualifications of a person of ordinary skill in the art ("POSITA").
The parties appear to agree that a POSITA would have a "Bachelor's degree in electrical

engineering, computer science, or a related field" and at least three years in the field. Compare
Dkt. No. 30-1 at ¶ 21 (Plaintiffs expert dee!.) with Dkt. No. 25-2 at ¶ 19 (Defendant's expert

decl.). The parties further agree that additional education could substitute for industry experience

and that industry experience could substitute for formal education. Id. The parties disagree,

however, on the field of art for industry experience. Defendant contends that a POSITA would
have at least three years of experience in the field of designing computer systems. Dkt. No. 25-2
at ¶ 19. Plaintiff contends that a POSITA would have at least three years of experience related to

computer memory systems and/or data compression. Dkt. No. 30-1 at ¶ 21.
As an initial matter, the court finds that the differences between the parties' descriptions of
a POSITA are not significant for the purposes

of claim construction. Having considered the

parties' proposals and the factors that may be considered in determining the level of skill in the
art, the court finds that a person of ordinary skill in the art would have a Bachelor of Science degree

8

in electrical engineering, computer science, or a related field and a working knowledge of the

technologies implemented in "computer memoiy management

.

.

.

for performing data

compressionldecompression." '691 Patent at 1:6-9; 2:3-4

IV.

CONSTRUCTION OF DISPUTED TERMS
The parties dispute the meaning and scope of three terms or phrases in the '691 Patent.
A.

"compression/decompression logic"

Defendant's Proposal

PlaintiWs Proposal

logic that can compress and decompress data

logic that can compress or decompress data
1.

Analysis

The term "compressionldecompression logic" appears in claims

1

and 21 of the '691

Patent. The parties' dispute concerns the virgule or diagonal mark "I" between compression and

decompression, specifically whether the virgule imposes an "and" or "or" requirement on the term.

Plaintiff argues that the term's construction should include "or" instead of "and" because "the
patent teaches that 'the term in-line compressionldecompression may

be defined as

performing

compression or decompression while data is en-route." Doc. #30 at 10 (quoting '691 Patent at
3:46-49). Plaintiff contends that Defendant actively ignores this so-called "definitional statement."
Id. at 11. Plaintiff further argues that the claim terms "compression engine" and "decompression

engine" in claims 17 and 15, respectively, "prov[es] that the invention encompasses logic that can
perform either compression or decompression." Id. at 11-12.

Defendant argues that "[ijn all disclosed embodiments of memory controllers in the '691
patent specification, the 'compression/decompression logic,' and the 'compression/decompression
engine 150'

. . .

performs both compression and decompression." Doc. #25 at 10-11. Defendant

argues "regardless of what the compression/decompression engine 150 does on any particular
instance of the step, the compression/decompression engine 150 is able to perform both
I,J

compression and decompression."
"compressionldecompression

In other words, Defendant argues that the

Id. at 11.

logic" require logic that includes both compression and

decompression capability.
At the outset, the court notes that both parties have offered extrinsic definitions in support

of their positions. Plaintiff's extrinsic definitions interpret the virgule as imparting an "and/or"
meaning.

See, e.g,

Doc. #30-4 at 4 (defining "virgule" as "a short diagonal line (/) used between

two words to show either is applicable (and/or)"); Doc. #30-5 at 4 (defining "virgule" as "[a]

diagonal mark

(I) used esp. to separate alternatives, as in and/or"); Doc. #30-7 at 2

compresses or decompresses media files

. . .

("A codec

{s]ome codecs include both parts, and other codecs

only include one of them."). Defendant offers extrinsic definitions for the term codec, which

Defendant contends is synonymous with the "compressionldecompression logic" term. Doe. #25
at 12-13.

Defendant's extrinsic definitions interpret the term "codec" as requiring both

compression and decompression capability.

See, e.g.,

Doe. #25-7 at 4 (defining "codec" as "[s]hort

for compressor/decompressor. Hardware or software that can compress and uncompress audio or

video data."); Doe. #25-8 at 5 ("In multimedia, an algorithm that compresses audio, video, or

graphics files for efficient storage or transmission, and then decompresses them for playback

purposes."). The court finds that the parties' extrinsic definitions do not resolve the question of

how the term "compressionldecompression logic" should be construed in the context of the '691
Patent. Phillips, 415 F.3d at 1318 (explaining that extrinsic evidence in general is less reliable

than the patent and its prosecution history in determining how to read claim terms).
Turning first to the claims, the court finds that the claims do not impose a requirement that

the "compressionldecompression logic" include both compression and decompression logic.
e.g.,

'691 Patent at cis.

1

See,

and 21. Rather, the court finds that a POSITA would understand the

10

scope of "compression/decompression logic" to encompass logic capable of compression or

decompression and also logic capable of compression and decompression. This understanding is
confirmed by other claims that separately use the terms "compression engine" (claim 17) and

"decompression engine" (claim 15). '691 Patent at cl. 17 ("loading said uncompressed data into a
compression engine within said memory controller from said first bus while unloading compressed
data from said engine to a second bus coupled to said memory controller") (emphasis added); see

also Id. at ci.

15

("selecting said first bus and coupling said first bus to a decompression engine in

said memory controller, wherein said data is transferred via said first bus to said decompression

engine") (emphasis added).

Claims 15 and 17 demonstrate that the patentee contemplated

implementations with logic capable of compression or decompression. Id. The court finds that a
POSITA would not interpret "compression/decompression logic" as limited to logic that includes
both compression and decompression. Phillips, 415 F.3d at 1314 (explaining that "[ojther claims

of the patent in question, both asserted and unasserted, can also be valuable sources of
enlightenment as to the meaning of a claim term."). Rather, a POSITA would understand the term,
in the context of the '691 Patent, to encompass logic that includes the capability to perform

compression, decompression, or both.
This interpretation is confirmed by the specification.

The specification describes the

system as capable of both compression and decompression. See, e.g., '691 Patent at 3:42-43; 4:4546. The specification also states that "the term in-line compression/decompression may be defined
as performing compression or decompression while data is en-route." Id. at 3:46-49 (emphasis

added). Even if not a "definitional statement" as argued by Plaintiff, this description from the

specification shows that the patentee did not intend to disclaim the broader plain and ordinary
meaning of the virgule ("I") and limit the phrase "compression/decompression logic" to logic that

11

requires both compression and decompression capability. Continental Cirs. LLC

v.

Intel Corp.,

contain
915 F.3d 788, 797 (Fed. Cir. 2019) ("To disavow claim scope, the specification must
expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.")

support
(citations and internal quotation marks omitted). Rather, the claims and the specification
Patent at
an interpretation that encompasses compression, decompression, or both. See, e.g., '691
5:11-13 (with respect to Figure 3 describing that "[ijn step 320, the data is processed (either

("When
compressed or decompressed) by the compression/decompression engine 150."); 2:38-42
the system is to perform a compression or a decompression of a unit of data.
the data.

.

.

the system transfers

into the compression/decompression logic.").
2.

For

. .

Court's Construction
reasons

the

forth

set

above,

the

Court

construes

the

term

"compression/decompression logic" to mean "logic that can compress, decompress, or both."
B.

The "logic for" terms

The "logic for" terms include two disputed phrases. Because the threshold dispute between

the parties is the

samewhether the terms are subject to means-plus-function interpretation in

accordance with 35 U.S.C.

§

112, ¶

63the court addresses

first "logic for" term appears in independent claim

1

the "logic for" terms together. The

and recites:

logic for directing transfer of data from said first memory array via said first bus to
be processed by said compression/decompression logic and then transferred to said
second memory array via said second bus
'691 Patent at cl.

1

(reproduced supra). The parties' claim construction proposals are as follows:

The court notes that paragraph 6 of35 U.S.C. § 112 was replaced with 35 U.S.C. § 112(f)
Because
when the Leahy-Smith America Invents Act (AlA) took effect on September 6, 2012.
refers to the
the application that the resulted in the '691 Patent was filed before that date, the court
pre-AIA version of § 112.
12

Defendant's Proposal

Plaintiffs Proposal

Plain and ordinary meaning; not means-plusfunction

Means-plus-function under 35
6 (pre-AIA)

Alternatively, if means-plus-function:

Function: "directing transfer of data from
said first memory array via said first bus to be
processed by said
compressionldecompression logic and then
transferred to said second memory array via
said second bus"

Function: "directing transfer of data from
said first memory array via said first bus to be
processed by said
compression/decompression logic and then
transferred to said second memory array via
said second bus"

U.S.C. § 112 ¶

Structure: indefinite

Structure: memory controller or other logic
(e.g., an operating system)
The second "logic for" term appears in independent claim

21

and recites:

selection logic for selecting and coupling a first of said busses to said
compression/decompression input and further for selecting and coupling a second
of said busses to said compression/decompression output
'691 Patent at cl. 21 (reproduced supra). The parties' claim construction proposals are as follows:

Defendant's Proposal

Plaintiffs Proposal
Plain and ordinary meaning; not means-plus
function

Means-plus-function under
6 (pre-AIA)

Alternatively, if means-plus-function:

Function: selecting and coupling a first of
said busses to said
compression/decompression input" and
"selecting and coupling a second of said
busses to said compression/decompression
output"

Function: "selecting and coupling a first of
said busses to said
compression/decompression input" and
"selecting and coupling a second of said
busses to said compression/decompression
output"

35 U.S.C. § 112 ¶

Structure: indefinite

Structure: memory controller or other logic
(e.g., an operating system)
1.

Analysis

The principal dispute between the parties is whether the "logic for" terms are subject to
means-plus-function interpretation in accordance with 35
13

U.S.C. § 112,

¶ 6. Defendant argues that

the "logic for" terms should be construed as means-plus-function terms because they do not recite
any structure, let along sufficiently definite structure and because the "logic for" terms recite

function without reciting sufficient structure for performing that function. Doc. #25 at 15, 21.

Defendant further argues that if construed in accordance with 35 U.S.C. 112, ¶ 6, the "logic for"
terms are indefinite because the specification fails to disclose sufficient corresponding structure
for performing the claimed functions. Id. Plaintiff argues that the "logic for" terms do not invoke

means-plus-function interpretation and that the terms do not otherwise require construction. Doc.
#30 at 14, 21. Alternatively, if the "logic for" terms do invoke means-plus-function interpretation,

Plaintiff argues that the terms are not indefinite because the specification discloses sufficient
corresponding structure for performing the claimed functions. Id. at 19-21, 23-24. For the
following reasons, the court finds that the "logic for" terms are not subject to

§

112, ¶ 6 and that

the "logic for" terms should be given their plain and ordinary meaning.
A patent claim may be expressed using functional language.

See

35 U.S.C.

§

112, ¶ 6;

Williamson, 792 F.3d at 1347-49, n.3 (Fed. Cir. 2015) (en banc in relevant portion). Means-plus-

function claiming occurs when a claim term invokes 35 U.S.C.

§

112, ¶ 6, which provides:

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.
But

§

112, ¶ 6 does not apply to all functional claim language. There is a rebuttal presumption

that

§

112, ¶ 6 applies when the claim language includes "means" or "step for" terms and that it

does not apply in the absence of those terms. Williamson, 792 F.3d at 1348. "When a claim term

lacks the word 'means,' the presumption can be overcome and

§

112, para. 6 will apply

if the

challenger demonstrates that the claim term fails to recite sufficiently definite structure or else

recites function without reciting sufficient structure for performing that function." Id. (citations
14

and internal quotation marks omitted). To rebut the presumption, "[a] challenger need only show
that the structure is not "sufficient." Egenera, Inc.
Cir. 2020) (citing TEK Glob., S.R.L.

v.

v.

Cisco Sys., Inc., 972 F.3d 1367, 1373 (Fed.

Sealant Sys. Int'l, Inc., 920 F.3d 777, 785 (Fed. Cir. 2019)).

"The correct inquiry, when 'means' is absent from a limitation, is whether the limitation, read in

light of the remaining claim language, specification, prosecution history, and relevant extrinsic
evidence, has sufficiently definite structure to a person of ordinary skill in the art." Apple Inc.,
757 F. 3d at 1298; see also Inventlo AG v. ThyssenKrupp Elevator Americas Corp., 649 F. 3d 1350,

(Fed. Cir. 2011) ("It is proper to consult the intrinsic record, including the written description,

when determining if a challenger has rebutted the presumption that a claim lacking the term

'means' recites sufficiently definite structure.")
The court's analysis proceeds in two steps. First, the court must determine whether the

"logic for" terms are in means-plus-function form pursuant to 35 U.S.C.
Bosch, LLC

v.

§

112, ¶ 6. See Robert

Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014). If the court determines that

the "logic for" terms invoke

§

112, ¶ 6, then the court proceeds to the next step and attempts "to

construe the disputed claim term by identifring the corresponding structure, material, or acts
described in the specification to which the term will be limited." Id. (internal quotation marks and
citations omitted).
At the outset, both parties recognize that the "logic for" terms do not recite the word

"means" and that there is a rebuttal presumption that

§

112, ¶ 6 does not apply. Doc. #25 at 15;

Doc. #30 at 15. Defendant bears the burden of overcoming the presumption that

not a apply by a preponderance of the evidence. Apex Inc.

v.

§

112, ¶ 6 does

Raritan Computer, Inc., 325 F.3d

a
1364, 1372 (Fed. Cir. 2003). Defendant argues that the use of "logic" in the "logic for" terms is

"nonce" word that does not connote any particular structure, let alone sufficiently definite

15

structure, to a POSITA. Doc. #25 at 16, 22. The court disagrees. Courts have concluded in many
instances that terms such as "processor," "circuit," and "logic" may connote sufficiently definite
structure and are not "nonce" or "functional" terms that are automatically subject to the limitations

of § 112, ¶ 6. In other words, whether recitation of "logic" for performing a function is governed
by

§

112, ¶ 6 depends on whether the stated objectives and operation

of the logic connote

sufficiently definite structure. Linear Tech., 379 F.3d at 1320 (finding that "circuit [for performing
a function]" was sufficiently definite structure because the claim recited the "objectives and

operations" of the circuit.).
Defendant cites to Egenera, Inc.

v.

Cisco Sys., Inc. in support of its argument that "logic"

is a "nonce" term that does not connote any particular structure or class

of structures to a POSITA.

972 F.3d 1367, 1373; Doc. #25 at 18, 23. In Egenera, the Federal Circuit considered the term

"logic to modify" where the patentee argued that "logic is a common term of art meaning software,
firmware, circuitry, or [aJ combination thereof." Egenera, 927 F.3d at 1374.

Contrary to

Defendant's argument, the Federal Circuit did not generally hold that the term "logic" is a generic
substitution for "means." Doc. #25 at 18, 23. Rather, the

§

112, ¶ 6 analysis is case and context

specific. Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018) (explaining that the

when evaluating whether a claim limitation invokes

'

§

112, ¶ 6 the "determination must be made

See, e.g., Linear Techs. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir.
2004) ("Thus, when the structure-connoting term 'circuit' is coupled with a description of the
circuit's operation, sufficient structural meaning will be conveyed to persons of ordinary skill in
the art, and § 112 ¶ 6 presumptively will not apply.") (citing Apex Inc. v. Raritan Computer, Inc.,
325 F.3d 1364, 1373 (Fed. Cir. 2003); TecSec, Inc. v. Int'l Bus. Machs. Corp., 731 F.3d 1336,
1348 (Fed. Cir. 2013) ("[T]he term 'digital logic' designates structure to skilled artisansnamely
digital circuits that perform Boolean algebra."); Clear Imaging Research, LLC v. Samsung Elecs.
Co., No. 2:19-cv-326-JRG, 2020 U.S. Dist. LEXIS 202507, at *23 (E.D. Tex. Oct. 30, 2020)
("[T]he term 'processor' is accorded its customary meaning of a class of structures on which
software can run.").
16

under the traditional claim construction principles, on an element-by-element basis, and in light of
evidence intrinsic and extrinsic to the asserted patents."). In addressing the specific circumstances
at issue in Egenera, the Federal Circuit held that "[a]s used, 'logic' is no more than a 'black box

recitation of structure' that is simply a generic substitute for 'means." Egenera, 927 F.3d at 1375
(quoting Williamson, 792 F.3d at 1350) (emphasis added).
Here, the context in which the term "logic" is used in the claims and the specification of
the '691 Patent provides sufficient structural meaning to a POSITA. For example, in addition to
the "logic for" terms, "logic" is recited in the first element of claims

1

and 21: "a memory

controller having compression/decompression logic." See '691 Patent, cis.

1

and 21 (emphasis

added). The '691 Patent discloses that the "compression/decompression logic.

. .

may be either

hardware or software implemented." '691 Patent at 2:34-36. The court notes that Defendant does
not take issue with the use of "logic" in the disputed term "compression/decompression logic." In
fact,

both

parties

use

the

term

"logic"

in

their

proposed

constructions

of

"compression/decompression logic," thus indicating that in the context of the '691 Patent "logic"
has a sufficiently understood structural meaning to a POSITA. Supra.

The claims themselves connote sufficient structure by describing how the "logic for" terms
operate within the claimed invention to achieve their objectives. For instance, claim

1

of the '691

Patent recites "logic" that directs the transfer of data from a first memory array via a first bus to
to a second
be processed by compression/decompression logic and that the data is then transferred

memory array via a second bus. See '691 Patent at 6:10-13. To achieve its objectives, claim

1

first
requires that the "logic" must be operatively coupled to both the first memory array and the
bus. Id. For the same reasons, claim 1 further requires that the "logic" must be operatively coupled

that
to both the second memory array and the second bus. Id. Indeed, claim 21 expressly recites

17

the "selection logic" is coupled to a plurality of busses and to the compression/decompression
logic. '691 Patent at 7:42-43. Similar to claim 1, claim 21 further recites that the "selection logic"
is for "selecting and coupling a first

of said busses to said compression/decompression input and

further for selecting and coupling a second of said busses to said compression/decompression

output." '691 Patent at 8:1-4.
Defendant argues that the claims fail to describe how the claimed "logic" operates. Doc.
#32 at 9-11. The court disagrees and finds that the context of claims

1

and 21 sufficiently conveys

the operation and objectives of the "logic for" terms to connote sufficient structure to a POSITA.
Apple

Inc.,

757 F.3d at 1299 ("Structure may also be provided by describing the claim limitation's

operation, such as its input, output, or connections."). The Federal Circuit has held that the term

"circuit," when accompanied by language reciting the circuit's objective and operation in sufficient
detail, connotes sufficient structure to avoid § 112, ¶ 6.
with the "logic for" terms at issue in claims

1

Linear Tech.,

379 F.3d at 1320. Similarly,

and 21, the court finds that the recited "logic" is

coupled with sufficient description of the logic's objective and operation to connote sufficient
structure to a POSITA. That a POSITA would understand the structural limitations of the "logic

for" terms from the claim language itself was recognized by Plaintiffs expert. Doc. #30-1 at ¶
50, 60.

Thus, in the context of the '691 Patent, a POSITA would understand that the claim

Defendant's expert reached the opposite conclusion. Doe. #25-2 at ¶J 36, 42 (concluding
that "logic" recited in the "logic for" terms "is a nonce [word/term] that does not connote any
particular structure or class of structures to a POSITA."). Given the totality of the evidence, the
court disagrees and finds that the contextual use of the term "logic" in claims 1 and 21 of the '691
Patent and the accompanying description in the specification provides sufficient structural
meaning to a POSITA to avoid § 112, ¶ 6. This is further confirmed by the fact that Defendant
does not contend that the term "compression/decompression logic" is subject to § 112, ¶ 6 and that
both parties use the term "logic" in their proposed construction of the disputed claim term.
18

language recites sufficient structure and that the "logic for" terms are not generic black box
recitations of structure or abstractions.
The specification further confirms that the "logic for" terms do not invoke

§

112, ¶ 6. The

specification describes the functional features of the "logic for" terms in connection with a memory

controller or other logic, such as an operating system:
[T]he memory controller 102 or other logic (e.g., an operating system) may direct
that data from a first memory array 103a be transferred to the memory controller
102, where it may be processed by the compressionldecompression engine 150.
For example, the memory controller 102 may have logic to perform this function.
Then the memory controller 102 or other logic may direct that the processed data
be transferred from the memory controller 102 to a second memory array 103b via
the second bus 135b.
'691 Patent at 4:11-19 (emphasis added). An embodiment of the memory controller is depicted in

Figure 2, which illustrates "selection logic 220" and "control logic 240." '691 Patent at Figure 2

(reproduced supra). The specification describes the arrangement, objectives, and operation of
selection logic 220 and control logic 240 as follows:
The memory controller 102 is shown with selection logic 220 coupled to the
compressionldecompression engine 150 and to the data busses 135. In this fashion,
the selection logic 220 is able to couple one of the data busses 135 to an input (I)
of the compressionldecompression engine 150 and another data bus 135 to an
output (0) of the compressionldecompression engine 150.
'691 Patent at 4:48-54.
[T]he control logic 240 may be for directing transfer of data from the one memory
array 103 via one data bus 135 to be processed by the compressionldecompression
logic 150 and then transferred to another memory array 103 via another data bus
135.

'691 Patent at 4:61-65.

Defendant does not appear to dispute that the "memory controller" and "operating system"
are disclosed as structural elements corresponding to the functional features of the "logic for"

terms. Instead, Defendant argues that this description in the patent specification does not connote

19

any particular structure or class of structures to a POSITA.

Doc. #25 at 17, 22. The court

disagrees. The parties reached an agreed construction for "memory controller," thus indicating

that the term connotes sufficient structural meaning to a POSITA. Doc. #38 at

1

(agreeing that

"memory controller" should be construed as "a circuit that issues electrical control and physical
address signals to a memory that causes the memory to read or write data."). Further, the parties'
experts agree that a "memory controller" was well-known to a POSITA when the application that

resulted in the '691 Patent was filed. Doe. #25-2 at ¶ 20 ('"Memory controller' is a term of art in
the field of computer systems. This term was well-known to a POSITA at the time of the '691
Patent."); Doe. #30-1 at ¶ 25 ("In my opinion, 'memory controller' needs no construction because
the term would have been (and is) well-understood to a POSA."). In short, the '691 Patent

discloses that the structure associated with the functional features of the "logic for" terms may be
a memory controller, and the parties agree that a memory controller was (and is) well-known to a
POSITA. Id. Defendant has not provided a persuasive reason why the "logic for" terms, when

read in light of the specification of the '691 Patent, do not connote sufficient structure to a POSITA
to avoid § 112, ¶ 6.

MTD Prods. Inc.

v.

lancu,

933 F.3d 1336, 1342 (Fed. Cir. 2019) ("The ultimate

question is whether the claim language read in light of the specification, recites sufficiently definite

structure to avoid

§

112, ¶ 6.") (citations and internal quotation marks omitted).

Although the presumption against

§

112, ¶ 6 is no longer "strong," it is still a presumption

that Defendant must affirmatively overcome. In the context of the '691 Patent, the court finds that
Defendant has not shown that the "logic for" terms invoke

§

112, ¶ 6. Accordingly, the court

rejects Defendant's argument that these terms are means-plus-function terms governed by
¶ 6 and finds that no further construction is required.

20

§

112,

2.

Court's Construction

For the reasons set forth above, the "logic for" terms are not subject to means-plus-function

interpretation and are given their plain and ordinary meaning.
V.

CONCLUSION
The court adopts the constructions listed in the Claim Construction Order rendered on this

day. Furthermore, the parties should ensure that all testimony that relates to the terms addressed

in this memorandum is constrained by the court's reasoning. However, in the presence of the jury

the parties should not expressly or implicitly refer to each other's claim construction positions and

should not expressly refer to any portion of this memorandum that is not an actual construction
adopted by the court. The references to the claim construction process should be limited to
informing the jury of the constructions adopted by the Court.
SIGNED this

day of March, 2022.

TED STAT

21