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1 (Counsel listed on signature page) 2

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

11 TECHNOLOGY PROPERTIES LIMITED

CASE NO. 3:12-cv-03865-VC (PSG)

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF

DATE: September 18, 2015 TIME: 10:00 AM th PLACE: Courtroom 5, 4 Floor JUDGE: Hon. Paul S. Grewal

Case No. 3:12-cv-03870-VC (PSG)

12 LLC, et al.,

Plaintiffs, v.

HUAWEI TECHNOLOGIES CO., LTD., et al., Defendants.

DLA PIPER LLP (US) EAST PALO ALTO

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs, v.

GARMIN LTD., et al., Defendants.

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF CASE NOS.: 3:12-CV-03865; -03870; -03876; -03877; -03880; -03881

v. 4

5 6 7 8 9

ZTE CORPORATION, et al.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs v.

SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

CASE NO. 3:12-cv-03877-VC (PSG)

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1 2 3

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Case No. 3:12-cv-03876-VC (PSG)

Plaintiffs

DLA PIPER LLP (US) EAST PALO ALTO

LG ELECTRONICS, INC., et al.,

v. 17

Plaintiffs

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Case No. 3:12-cv-03881-VC (PSG)

Case No. 3:12-cv-03880-VC (PSG)

Plaintiffs v.

NINTENDO CO., LTD, et al. Defendants.

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF CASE NOS.: 3:12-CV-03865; -03870; -03876; -03877; -03880; -03881

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3 I.

TABLE OF CONTENTS

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INTRODUCTION..............................................................................................................1

II. OVERVIEW OF U.S. PATENT NO. 5,809,336 ................................................................ 1

III. CLAIM CONSTRUCTION LAW ...................................................................................... 4

IV. CLAIM CONSTRUCTION ................................................................................................ 6

A. The ’336 patent prosecution history compels Defendants’ construction. ............... 7

1. Applicants expressly disclaimed reliance on an external crystal or

clock generator to control clock signal frequency or cause clock

signal oscillation. ........................................................................................ 7

2. Applicants also clearly disclaimed reliance on control signals................. 12

B. The ’336 patent specification also supports Defendants’ construction................. 13

C. The claim language further supports Defendants’ construction. .......................... 15

D. Defendants’ construction is consistent with all prior constructions of this

term. ...................................................................................................................... 16

E. Plaintiffs’ construction is incorrect. ...................................................................... 18

V. CONCLUSION ................................................................................................................. 19

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Page

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149 F.3d 1335 (Fed. Cir. 1998)................................................................................................. 5

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1 2 3 4 5 6

7 8 9

Chicago Bd. Options Exch. Inc. v. Int'l Secs. Exch. LLC,

TABLE OF AUTHORITIES CASES

Page

Abbott Labs. v. Sandoz, Inc.,

566 F.3d 1282 (Fed. Cir. 2009)................................................................................................. 5

Am. Piledriving Equip. v. Geoquip, Inc.,

637 F. 3d 1324 (Fed. Cir. 2011).............................................................................................. 11

Amhil Enters. Ltd. v. Wawa, Inc.,

81 F.3d 1554 (Fed. Cir. 1996)................................................................................................. 19

Astrazeneca AB v. Mut. Pharm. Co., Inc.,

384 F.3d 1333 (Fed. Cir. 2004)................................................................................................. 6

Ballard Med. Prods. v. Allegiance Healthcare Corp.,

268 F.3d 1352 (Fed. Cir. 2001)......................................................................................... 12, 13

Digital Biometrics, Inc. v. Identix, Inc.,

677 F.3d 1361 (Fed. Cir. 2012)............................................................................................... 15

Chimie v. PPG Indus., Inc.,

402 F.3d 1371 (Fed. Cir. 2005)............................................................................................... 11

Computer Docking Station Corp. v. Dell, Inc.,

519 F.3d 1366 (Fed. Cir. 2008)........................................................................................... 5, 11

Elkay Mfg. Co. v. Ebco Mfg. Co.,

192 F.3d 973 (Fed. Cir. 1999)................................................................................................. 11

Gillespie v. Dywidag Systs. Int’l, USA,

501 F.3d 1285 (Fed. Cir. 2007)........................................................................................... 5, 11

Krippelz v. Ford Motor Co.,

667 F.3d 1261,1267 (Fed. Cir. 2012)...................................................................................... 11

Microsoft Corp. v. Multi-Tech. Sys., Inc.,

357 F.3d 1340 (Fed. Cir. 2004)......................................................................................... 12, 13

N. Am. Container Inc. v. Plastipak Packaging Inc.,

415 F.3d 1335 (Fed. Cir. 2005)............................................................................................... 12

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)................................................................................. 4, 5, 15, 16

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1 2 3 4 5

6 7 8 9

10 11

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TABLE OF AUTHORITIES (cont’d)

Page

Rheox, Inc. v. Entact, Inc.,

276 F.3d 1319 (Fed. Cir. 2002)..................................................................................... 5, 11, 13

Schoenhaus v. Genesco, Inc.,

440 F.3d 1354 (Fed. Cir. 2006)................................................................................................. 6

SciMed Life Sys. v. Advanced Cardiovascular Sys.,

242 F.3d 1337 (Fed. Cir. 2001)............................................................................................... 15

Seachange Int'l, Inc. v. C-COR, Inc.,

413 F.3d 1361 (Fed. Cir. 2005)............................................................................................... 11

Southwall Techs., Inc., v. Cardinal IG Co.,

54 F.3d 1570 (Fed. Cir. 1995)....................................................................................... 5, 11, 13

Springs Window Fashions LP v. Novo Indus., L.P.,

323 F.3d 989 (Fed. Cir. 2003)........................................................................................... 12, 18

Thorner v. Sony Computer Entm’t Am. LLC,

669 F.3d 1362 (Fed. Cir. 2012)................................................................................................. 5

OTHER AUTHORITIES

Patent Local Rule 4-5...................................................................................................................... 1

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1 Pursuant to Patent Local Rule 4-5 and the Court’s Second Amended Case Management

2 Order, Defendants Garmin International, Inc., Garmin USA, Inc., Huawei Technologies Co., Ltd.,

3 Huawei Device Co., Ltd., Huawei Device USA, Inc., Futurewei Technologies, Inc., Huawei

4 Technologies USA, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., Nintendo Co., Ltd.,

5 Nintendo of America Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,

6 ZTE Corporation and ZTE (USA) Inc. (collectively, “Defendants”) submit the following Opening

7 Claim Construction Brief.

8 9

I. INTRODUCTION

10 “’336 patent”). The parties dispute the construction of only one claim term – “an entire oscillator

11 disposed upon said integrated circuit substrate” – which appears in each of the two asserted

12 independent claims. As the Court is aware from prior litigation involving Plaintiffs and the ’336

13 patent, this claim term (or variations thereof) has been the subject of previous claim construction

14 orders issued by this Court, the Eastern District of Texas, and the International Trade

15 Commission. As confirmed in differing ways by all of the prior claim construction orders, the

16 correct construction of this claim term must reflect the clear and unambiguous disclaimers that

17 the applicants made during the prosecution of the ’336 patent in order to obtain the claims over

18 otherwise invalidating prior art. As established in detail below, applicants’ clear prosecution

19 disclaimers mandate that the claimed “entire oscillator” cannot rely on any off-chip crystal, off-

20 chip clock generator, or control signal to cause clock signal oscillation or control clock signal

21 frequency. While the prosecution disclaimers alone require this result, the specification’s

22 teachings, its criticisms of the prior art, and the plain claim language further support this

23 conclusion.

The only patent remaining in the above-captioned cases is U.S. Patent No. 5,809,336 (the

II. OVERVIEW OF U.S. PATENT NO. 5,809,336

The ’336 patent is directed to a variable-speed clock (the “entire oscillator”) that controls

26 the speed of a CPU and that is incorporated on the same integrated circuit substrate as the CPU.

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1 Ex. A (’336 patent) at cover & 16:54-17:10.1 The variable-speed oscillator adjusts its frequency

2 in real time based upon the microprocessor’s physical and environmental characteristics,

3 including temperature, voltage and semiconductor manufacturing process quality, to track the

4 then-existing processing capabilities of the CPU. Id. at 16:54-17:10. In other words, the on-chip

5 oscillator’s frequency varies together with the frequency capability of the CPU. Id.

6 The ’336 patent issued as a divisional patent from a specification that describes several

7 different purported inventions. Ex. A at cover (“Division of Ser. No. 389,334, Aug. 3, 1989, Pat.

8 No. 5,440,749”). As a result, the ’336 patent’s “Summary of the Invention” section contains

9 material that is largely irrelevant to the asserted claims, with only lines 27 through 35 of column 3

10 pertaining to the alleged invention. Id. at 3:27-35. Similarly, the “Detailed Description of The

11 Invention” includes much extraneous material, with the only parts describing the ’336 patent’s

12 purported invention being found in the last 25 lines of column 16 and the first 37 lines of column

13 17, under the sub-headings “Optimal CPU Clock Scheme” and “Asynchronous/Synchronous

14 CPU.” Id. at 16:43-17:37.

15 In the parts of the specification that are relevant to the alleged invention claimed in the

16 ’336 patent, the specification explains that a high speed microprocessor must “operate over wide

17 temperature ranges, wide voltage swings, and wide variations in semiconductor processing” that

18 “all affect transistor gate propagation delays.” Ex. A at 16:44-48. These three parameters,

19 “processing,” “voltage” and “temperature,” are referred to as “PVT” parameters.

20 As the specification explains, traditional prior art microprocessor systems are designed

21 with a single fixed speed clock for all parts of the system. Ex. A at 16:48-50, 17:12-13. By

22 design, this conventional fixed speed clock (which includes an off-chip crystal and on-chip

23 components) always operates at a speed that is slow enough to ensure error-free operation during

24 those times when worst case PVT parameter conditions may exist. Id. As a result, the traditional

25 prior art microprocessor systems “must be clocked a factor of two slower than their maximum

1 All exhibits cited in this brief are attached to the accompanying Declaration of Aaron Wainscoat

in Support of Defendants’ Opening Claim Construction Brief.

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28 17:2.

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1 theoretical performance, so they will operate properly in worse [sic] case conditions” to ensure

2 that a user always experiences error-free operation. Id. at 16:48-53.

3 To avoid the constrained speed of the prior art and to always operate at or near its

4 maximum performance capabilities for the existing PVT parameter conditions, the ’336 patent

5 replaces the prior art’s external fixed-speed crystal clock which controls the CPU’s speed with an

6 on-chip “ring counter variable speed system clock” (also referred to as a “ring oscillator variable

7 speed system clock”) that adjusts its speed in real time as a function of existing PVT parameters

8 to match the CPU’s maximum frequency capability under those parameters. Ex. A at 3:26-34,

9 16:54-17:10, 17:19-22. In other words, the oscillator’s frequency varies together with the

10 frequency of the CPU. Id. at 3:26-34, 16:60-17:2.

11 Unlike a fixed clock’s speed, the frequency of the claimed internal variable speed

12 oscillator varies significantly as a function of PVT parameters. Ex. A at 16:59-60 (“The ring

13 oscillator frequency is determined by the parameters of temperature, voltage, and process”). For

14 example, the ’336 patent’s specification discloses that the speed of the variable speed clock will

15 be 100 megahertz at room temperature, but will slow to 50 megahertz if the temperature rises to

16 70°C (i.e., 158° F). Id. at 16:59-63. The oscillator’s speed may vary, according to the patent, by

17 as much as a factor of four (i.e., by as much as 400%) depending on all three PVT parameters. Id.

18 at 17:21-22.

19 According to the ’336 patent, the “optimum performance” of the variable speed oscillator

20 supposedly results from fabricating and locating the variable speed oscillator on the same

21 semiconductor substrate as the CPU, so that the same PVT parameters affect both the oscillator

22 and the CPU. Ex. A at 16:57-58, 16:63-17:10. For example, if the temperature of the substrate

23 rises, then the processing speed capability of the CPU decreases. But because the oscillator and

24 CPU are fabricated on the same substrate, this rise in temperature also causes the speed of the

25 variable speed oscillator to decrease, so that the oscillator leads the CPU to a slower maximum

26 speed at which it can operate properly. See id. As the specification explains, this ensures that the

27 CPU “will always execute at the maximum frequency possible, but never too fast.” Id. at 16:67-

DLA PIPER LLP (US) EAST PALO ALTO

When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic

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1 Because certain devices which communicate with the CPU cannot tolerate a variable

2 speed clock, the system requires a second clock that is independent of the variable speed

3 oscillator. Ex. A at 17:22-34. The independent second clock is connected to the input/output

4 (I/O) interface, as illustrated in Figure 17 of the ’336 patent, with the second clock on Figure 17

5 being a conventional “crystal clock” 434:

6 7 8 9

25 III. CLAIM CONSTRUCTION LA W

Each independent claim of the ’336 patent (including asserted claims 6 and 13) provides for a fixed-speed, independent second clock that is connected to an input/output (“I/O”) interface. Ex. A at 17:14-34. The frequency of the second clock is fixed to allow the I/O interface to interact with off-chip memory and other off-chip components, and to perform operations that require a fixed frequency, such as “video display updating and disc drive reading and writing.” Id. at 17:14-34.

By connecting the variable speed oscillator to the CPU while separately connecting the independent fixed speed clock to the I/O interface, the variable speed CPU is decoupled from the fixed speed I/O interface. Id. at 17:32-34. This configuration optimizes the performance of the system by allowing the CPU to run as fast as possible under the current PVT conditions while maintaining the I/O interface 432 at a stable fixed speed. Id. at 17:32-34.

evidence such as the language of the claims themselves, the specification, and the prosecution

history. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc). Claim -4-

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1 terms “are generally given their ordinary and customary meanings as understood by a person of

2 ordinary skill in the art when read in the context of the specification and prosecution history.”

3 Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). There are

4 two circumstances where a claim is not entitled to its plain and ordinary meaning: “1) when a

5 patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows

6 the full scope of a claim term either in the specification or during prosecution.” Id. Courts may

7 also consider “extrinsic evidence,” which “consists of all evidence external to the patent and

8 prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”

9 Phillips, 415 F.3d at 1317 (quotation and citation omitted). However, such evidence is “less

10 significant than the intrinsic record in determining the legally operative meaning of claim

11 language.” Id. (quotation and citation omitted).

12 Of particular importance here, the scope of a claim term must be limited if the applicant

13 argued during prosecution that the claim has a limited scope in order to obtain the patent from the

14 PTO. Southwall Techs., Inc., v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“Claims

15 may not be construed one way in order to obtain their allowance and in a different way against

16 accused infringers.”); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (“Explicit

17 arguments made during prosecution to overcome prior art can lead to a narrow claim

18 interpretation because ‘[t]he public has a right to rely on such definitive statements made during

19 prosecution’”) (quoting Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir.

20 1998)); Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009) (en banc) (“‘the

21 prosecution history can often inform the meaning of the claim language by demonstrating . . .

22 whether the inventor limited the invention in the course of prosecution, making the claim scope

23 narrower than it would otherwise be.’”) (quoting Phillips, 415 F.3d at 1317).

24 In short, “[t]he patentee is held to what he declares during the prosecution of his patent.”

25 Gillespie v. Dywidag Systs. Int’l, USA, 501 F.3d 1285, 1291 (Fed. Cir. 2007) (reversing district

26 court’s construction and determination of literal infringement because patentee’s “construction

27 was negated during prosecution.”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366,

28 1379 (Fed. Cir. 2008) (holding that “the sum of the patentees’ statements during prosecution

The parties propose the following constructions of the term “an entire oscillator disposed

Case3:12-cv-03880-VC Document110 Filed08/04/15 Page11 of 28

1 would lead a competitor to believe that the patentee had disavowed” devices otherwise covered

2 by the claim language). Thus, if an inventor defines a term or otherwise disclaims a meaning

3 during prosecution, the inventor has acted as his own lexicographer and the term is limited to the

4 scope of the definition or disclaimer. Astrazeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333,

5 1341-42 (Fed. Cir. 2004) (the inventor’s reference to language in the specification as a

6 “definition” constituted lexicography); Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1358-60

7 (Fed. Cir. 2006) (lexicography in file history by virtue of disclaimer of scope of claim term

8 during prosecution).

IV. CLAIM CONSTRUCTION

11 upon said integrated circuit substrate,” which is recited in asserted independent claims 6 and 13 of

12 the ’336 patent. Ex. A (’336 patent Ex Parte Reexamination Certificate) at 2:18-19, 3:34-35

13 (TPL853_00000053.)

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Term

Defendants’ Construction

Plaintiffs’ Construction

an entire oscillator disposed upon said integrated circuit substrate

an oscillator that is located entirely on the same semiconductor substrate as the central processing unit and does not rely on a control signal or an external crystal/clock generator to cause clock signal oscillation or control clock signal frequency

An [oscillator] that is located entirely on the same semiconductor substrate as the [central processing unit].

The intrinsic evidence compels Defendants’ construction because it embodies clear disclaimers of claim scope that the applicants made during the prosecution of the ’336 patent to secure allowance of their claims over otherwise invalidating prior art. Defendants’ construction is also consistent with the specification’s teachings, its criticisms of the prior art, and the plain language of the claims. These unambiguous disclaimers and teachings in the intrinsic evidence mandate that the claimed “entire oscillator” cannot rely on any off-chip crystal, off-chip clock generator, or control signal to cause clock signal oscillation or control clock signal frequency. Defendants’ construction incorporates these key disclaimers and teachings, while Plaintiffs’ construction ignores them. Furthermore, as established below, by clearly incorporating these

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1 disclaimers into the construction, Defendants’ construction avoids the ambiguity that was present

2 in prior constructions of this term in prior litigations.

4 During prosecution of the ’336 patent, the applicants repeatedly distinguished their

5 purported invention from the prior art on the grounds that their on-chip oscillator does not rely on

6 either an external crystal/clock generator or any control signal, to cause clock signal oscillation or

7 control clock signal frequency. Applicants’ prosecution history arguments constitute clear and

8 unambiguous disclaimers that limit the scope of the “entire oscillator” limitation. Defendants’

9 construction is correct because it recognizes and incorporates these key disclaimers, while

10 Plaintiffs’ construction wholly ignores them.

1. Applicants expressly disclaimed reliance on an external crystal or clock generator to control clock signal frequency or cause clock signal oscillation.

A. The ’336 patent prosecution history compels Defendants’ construction.

13 During prosecution, applicants expressly and repeatedly distinguished their purported

14 invention from the prior art on the grounds that their on-chip oscillator does not rely on an

15 external crystal or clock generator to cause clock signal oscillation or control clock signal

16 frequency. More specifically, applicants argued that their on-chip oscillator does not rely on an

17 external crystal or clock generator to (1) control the frequency of the clock signal, or (2) cause

18 clock signal oscillation. These disclaimers began with applicants’ attempt to overcome U.S.

19 Patent No. 4,503,500 to Magar (“Magar”), Figure 2a of which is reproduced below. The

20 examiner rejected the claims in view of Magar, correctly noting that the “CLOCK GEN” circuitry

21 in Figure 2a was fabricated on the same microprocessor substrate 10 as the CPU, as is required by

22 the claims.

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Ex. B (Magar) at Fig. 2a (annotations in red added); Ex. C (April 3, 1997 Rejection) at 2 (TPL853_0002434). In response, applicants attempted to distinguish Magar on the basis that an external off-chip crystal (connected to the X1 and X2 inputs in the figure above) controlled the frequency of the clock:

A review of the Magar reference shows that it is apparently no more pertinent than prior art acknowledged in the application, in that the clock disclosed in the Magar reference is in fact driven by a fixed frequency crystal, which is external to the Magar integrated circuit.2

Ex. D (July 7, 1997 Amend.) at 2 (TPL853_00002426). Applicants then further emphasized the difference between their claimed on-chip variable speed clock and Magar’s clock generator, which relies on the frequency of an external crystal:

Contrary to the Examiner’s assertion in the rejection that ‘one of ordinary skill in the art should readily recognize that the speed of the cpu and the clock vary together due to manufacturing variation, operating voltage and temperature of the IC [integrated circuit],’ one of ordinary skill in the art should readily recognize that the speed of the CPU and clock do not vary together due to manufacturing variation, operating voltage, and

2 Unless otherwise indicated, all emphasis in this brief is added by Defendants.

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underlying substrate, as claimed.

Id. at 4 (TPL853_00002428). This express disclaimer could not be clearer: the claims exclude oscillators using crystals to control frequency of the clock signal. More specifically, an on-chip oscillator that does not vary as a function of the PVT parameters – such as an oscillator whose frequency is controlled by any crystal or control signal – is outside the scope of the claims.

Unconvinced, the PTO issued a second rejection based on Magar. In response, applicants amended their claims to explicitly require that the “entire” oscillator be on the same integrated circuit substrate as the CPU. Ex. E (Feb. 10, 1998 Amend.) at 1-2 (TPL853_02954557-58).3 Along with this amendment, applicants again distinguished Magar on the ground that it relies on

3 For example, prosecution claim 73, which ultimately issued as claim 6, was amended to recite “an entire oscillator disposed upon said integrated circuit substrate.” Ex. E (Feb. 10, 1998 Amend.) at 1-2 (TPL853_02954557-58) (underlined text indicating addition through amendment).

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1 temperature of the IC in the Magar processor . . . This is simply because the Magar microprocessor clock is frequency controlled by a crystal

2 which is also external to the microprocessor. Crystals are by design fixed frequency devices whose oscillation speed is designed to be tightly

3 controlled and to vary minimally due to variations in manufacturing, operating voltage and temperature. The Magar microprocessor in no way

4 contemplates a variable speed clock as claimed.

Id. at 3-4 (TPL853_00002427-28) (first emphasis in original). Thus, in this first amendment, applicants expressly and unambiguously disclaimed oscillators that rely on an external crystal for frequency control.

Applicants then further argued in the same amendment that, even if the Magar crystal oscillator were located entirely on the same chip as the CPU, Magar would still not practice the claimed invention because Magar’s clock could not vary with process, voltage and temperature (“PVT”) parameters:

12 [C]rystal oscillators have never, to Applicants’ knowledge, been fabricated on a single silicon substrate with a CPU, for instance. Even if

13 they were, as previously mentioned, crystals are by design fixed-frequency

devices whose oscillation frequency is designed to be tightly controlled and

14 to vary minimally due to variations in manufacturing, operating voltage

and temperature. The oscillation frequency of a crystal on the same

15 substrate with the microprocessor would inherently not vary due to

variations in manufacturing, operating voltage and temperature in the

16 same way as the frequency capability of the microprocessor on the same

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Magar’s clock generator relies on an external crystal connected to terminals X1 and X2 to oscillate, as is conventional in microprocessor designs. It is not an entire oscillator in itself. And with the crystal, the clock rate generated is also conventional in that it is a fixed, not a variable, frequency. The Magar clock is comparable in operation to the conventional crystal clock 434 depicted in Fig. 17 of the present application for controlling the I/O interface at a fixed rate frequency, and not at all like the clock on which the claims are based, as has been previously stated.

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1 an external crystal for frequency control, arguing that the “the essential difference” between

2 Magar’s fixed-frequency clock and the variable speed clock shown in Figure 18 of the ’336 patent

3 is that Magar’s clock relies on a “fixed frequency of the external crystal” to set the “frequency or

4 rate” of the clock:

5 6 7 8 9

The signals PHASE 0, PHASE 1, PHASE 2 and PHASE 3 in Applicants’ Fig. 18 are synonymous with Q1, Q2, Q3 and Q4 depicted in Magar Fig. 2a. The essential difference is that the frequency or rate of the PHASE 0, PHASE 1, PHASE 2 and PHASE 3 signals is determined by the processing and/or operating parameters of the integrated circuit containing the Fig. 18 circuit, while the frequency or rate of the Q1, Q2, Q3 and Q4 signals depicted in Magar Fig. 2a are determined by the fixed frequency of the external crystal connected to the circuit portion outputting the Q1, Q2, Q3 and Q4 signals shown in Magar Fig. 2a.

10 Id. at 4 (TPL853_02954560). By this statement, applicants again expressly distinguished their

11 claimed invention from Magar on the ground that their invention does not, while Magar does, rely

12 on a fixed frequency external crystal to control the “frequency or rate” of the clock.

13 In addition to distinguishing Magar’s clock from their purported invention based on the

14 Magar clock’s reliance on an external crystal for frequency control, applicants also distinguished

15 Magar on the grounds that Magar’s clock generator required an external crystal to cause clock

16 signal oscillation:

22 Id. at 3 (TPL853_02954559).

23 Applicants concluded their argument about Magar by “specifically” distinguishing their

24 claimed invention from an external crystal on the dual bases of frequency control and causing

25 oscillation:

The Magar teaching . . . is specifically distinguished from the instant case in that it is both fixed frequency (being crystal based) and requires an external crystal or external frequency generator.

28 Id. at 5 (TPL853_02954561).

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1 Thus, applicants distinguished Magar both (1) because the frequency of Magar’s on-chip

2 clock was controlled by an external crystal, and (2) because Magar’s on-chip clock relied on an

3 external crystal to cause oscillation. In light of these clear disavowals, the correct construction of

4 this claim term must capture both disclaimers. Krippelz v. Ford Motor Co., 667 F.3d 1261,1267

5 (Fed. Cir. 2012) (affirming construction imposing two limitations on the disputed claim term,

6 because patent owner distinguished the prior art on two separate grounds).4

7 The disclaimers are clear: Plaintiffs repeatedly told the Examiner and the public that their

8 claimed “entire oscillator” does not rely on an external crystal or frequency generator to control

9 the frequency of the clock signal or to cause clock signal oscillation. The claimed “entire

10 oscillator” cannot cover what Plaintiffs disclaimed. Southwall, 54 F.3d at 1576 (“Claims may not

11 be construed one way in order to obtain their allowance and in a different way against accused

12 infringers.”); Rheox, 276 F.3d at 1325 (“Explicit arguments made during prosecution to overcome

13 prior art can lead to a narrow claim interpretation because ‘[t]he public has a right to rely on such

14 definitive statements made during prosecution.’”); Gillespie, 501 F.3d at 1291 (“The patentee is

15 held to what he declares during the prosecution of his patent.”); Computer Docking, 519 F.3d at

16 1379 (holding that “the sum of the patentees’ statements during prosecution would lead a

17 competitor to believe that the patentee had disavowed coverage of laptops” and, thus, affirming

18 the trial court's construction of the portable computer limitation); Seachange Int'l, Inc. v. C-COR,

19 Inc., 413 F.3d 1361, 1372-75 (Fed. Cir. 2005) (“Where an applicant argues that a claim possesses

20 a feature that the prior art does not possess in order to overcome a prior art rejection, the

21 argument may serve to narrow the scope of otherwise broad claim language.”).5

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5 See also Am. Piledriving Equip. v. Geoquip, Inc., 637 F. 3d 1324, 1336 (Fed. Cir. 2011) (“[A]n

applicant’s argument that a prior art reference is distinguishable on a particular ground can serve

as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds

as well.”); Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of

consulting the prosecution history in construing a claim is to ‘exclude any interpretation that was

disclaimed during prosecution.’”; “Accordingly, ‘where the patentee has unequivocally

disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches

4 Regardless of whether either or both of applicants’ arguments distinguishing Magar ultimately were successful, or even necessary, in convincing the Examiner to allow the claims, the public is

entitled to rely on them. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999).

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1 2 3 4 5 6 7 8 9

2. Applicants also clearly disclaimed reliance on control signals.

Applicants also repeatedly, clearly, and unambiguously disclaimed reliance on control signals to control the oscillator. The first of these disclaimers was made in response to a rejection by the Examiner in light of U.S. Patent No. 4,670,837 to Sheets (“Sheets”). Applicants distinguished their “present invention” from microprocessors that rely on frequency control information from an external source:

The present invention does not similarly rely upon provision of frequency control information to an external clock, but instead contemplates providing a ring oscillator clock and the microprocessor within the same integrated circuit. The placement of these elements within the same integrated circuit obviates the need for provision of the type of frequency control information described by Sheets, since the microprocessor and clock will naturally tend to vary commensurately in speed as a function of various parameters (e.g., temperature) affecting circuit performance. Sheets’ system for providing clock control signals to an external clock is thus seen to be unrelated to the integral microprocessor/clock system of the present invention.

Ex. F (April 11, 1996 Amend.) at 8 (TPL853_02954574). Because applicants referred to the “present invention” in this statement, their disclaimer applies to all claims. See, e.g., Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1360-62 (Fed. Cir. 2001).

But that disclaimer, like the prior disclaimers, could not secure allowance. In response to a subsequent rejection, the applicants went even further and disclaimed the use of controlled oscillators altogether, regardless whether the control is on-chip or not:

Even if the examiner is correct that the variable clock in Sheets is in the same circuit as the microprocessor of system 100, that still does not give the claimed subject matter. In Sheets, a command input is required to change the clock speed. In the present invention, the clock speed varies

and narrows the ordinary meaning of the claim congruent with the scope of the surrender.’”) (citation omitted); Microsoft Corp. v. Multi-Tech. Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) (a court “cannot construe the claims to cover subject matter broader than that which the patentee

itself regarded as comprising its invention and represented to the PTO”); Springs Window

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Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 993-96 (Fed. Cir. 2003) (rejecting patentee’s attempt to narrow the scope of disclaimer, even though the examiner did not rely on the disclaimer to issue the claims); N. Am. Container Inc. v. Plastipak Packaging Inc., 415 F.3d 1335, 1345-46 (Fed. Cir. 2005) (holding that “the applicant, through argument [that the prior-art inner walls are ‘slightly concave’] during the prosecution, disclaimed inner walls of the base portion having any concavity . . . [a]lthough the inner walls disclosed in the [prior art] may be viewed as entirely concave”).

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1 correspondingly to variations in operating parameters . . . No command

input is necessary to change the clock frequency.

Ex. G (January 8, 1997 Amend.) at 4 (TPL853_00002449). Thus, according to applicants,

controlling the on-chip oscillator’s speed using a command signal “does not give the claimed subject matter.” Id. Indeed, in a later amendment, the applicants left no doubt that, unlike “all cited references,” the claimed oscillator is completely free of inputs and extra components:

Crucial to the present invention is that . . . when fabrication and

7 environmental parameters vary, the oscillation or clock frequency and the

frequency capability of the driven device will automatically vary together.

8 This differs from all cited references in that . . . the oscillator or variable

speed clock varies in frequency but does not require manual or

9 programmed inputs or external or extra components to do so.

Ex. D at 5 (TPL853_00002429).6 Thus, applicants clearly stated that even an on-chip oscillator does not satisfy the claims if a control signal is required to change the frequency of the oscillator. Id. at 4-5 (TPL853_00002428-29). These repeated clear and unambiguous disavowals of claim scope not only support Defendants’ construction; they compel it. Southwall Techs., 54 F.3d at 1576; Rheox, 276 F.3d at 1325.

15 B. The ’336 patent specification also supports Defendants’ construction.

Defendants’ construction also mirrors the clear-cut teaching in the specification of what the “entire oscillator” is. The title of the ’336 patent is “High Performance Microprocessor Having a Variable Speed System Clock.” Consistent with this title, the specification criticizes prior art solutions that clocked a CPU with a fixed clock, such as, for example, a clock whose frequency is controlled by an external crystal:

21 Traditional CPU designs are done so that with the worse [sic] case of the three parameters, the circuit will function at the rated clock speed. The

22 result are designs that must be clocked a factor of two slower than their maximum theoretical performance, so they will operate properly in worse

23 [sic] case conditions.

Ex. A (’336 patent) at 16:48-53; see also id. at 17:12-33.

Rejecting the prior art fixed-speed clock approach (which is the approach used in the

6 When a patentee uses terms such as “crucial to” and “in the present invention,” this use has a

special effect on the scope of the claim. See Microsoft Corp., 357 F.3d at 1351-52 (construing

claim to require a feature that was “central to the functioning of the claimed invention”).

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1 Defendants’ accused products), the ’336 patent discloses a variable-speed oscillator that is

2 completely on the same semiconductor substrate as the CPU and whose speed freely varies with

3 the PVT parameters of the substrate. As the specification explains, the frequency of the variable-

4 speed oscillator is determined by the PVT parameters, so that the CPU can always operate at its

5 maximum possible frequency:

6 7 8 9

The ring oscillator frequency is determined by the parameters of temperature, voltage, and process. At room temperature, the frequency will be in the neighborhood of 100 MHZ. At 70 degrees Centigrade, the speed will be 50 MHZ. ... By deriving system timing from the ring oscillator 430, CPU 70 will always execute at the maximum frequency possible, but never too fast.

10 Ex. A at 16:54-17:2. In other words, by insulating the oscillator from any outside influence, the

11 oscillator can vary and drive the CPU to execute at the fastest speed possible. Id. at 17:14-34.

12 Because the CPU must still communicate with the outside world, the patent discloses the

13 use of an I/O interface which is clocked by an off-chip, fixed-speed crystal clock. Id. By

14 decoupling the speed of these two clocks and allowing the frequency of the on-chip variable

15 speed clock to vary with the PVT parameters while the I/O interface relies on an off-chip, fixed-

16 speed crystal oscillator, the patent allegedly achieves “optimum performance” under any PVT

17 parameters. Id.

18 Thus, according to the specification, the applicants chose to use a variable speed

19 oscillator—which varies and is “determined by” PVT parameters—rather than the prior art’s

20 fixed speed clocks—which did not vary with the PVT parameters because their frequency was

21 “fixed” by an external crystal or control signal. This was not simply a design choice. By

22 disclosing that the applicants’ free-running oscillator cures sub-optimal performance of the prior

23 art’s fixed speed clocks, the specification makes it clear that the applicants’ oscillator is

24 antithetical to the prior art’s fixed-speed approach of allowing crystals, clocks, or signals to affect

25 the oscillator’s frequency.

26 In short, the specification disclaims the prior art’s fixed-speed clocks (which rely on a

27 crystal, clock, or signal to control the on-chip oscillator’s frequency) in favor of a variable-speed

28 oscillator (whose frequency is determined by PVT parameters) by claiming to overcome the

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1 perceived deficiencies of the prior art fixed-frequency clocks. Defendants’ construction correctly

2 reflects these express teachings and disclaimers. Chicago Bd. Options Exch. Inc. v. Int'l Secs.

3 Exch. LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012) (finding that “the specification goes well

4 beyond expressing the patentee’s preference” and that “its repeated derogatory statements...may

5 be viewed as a disavowal of that subject matter from the scope of the Patents claims.”); SciMed

6 Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)

7 (holding “[w]here the specification makes clear that the invention does not include a particular

8 feature, that feature is deemed to be outside the reach of the claims of the patent....”); Phillips,

9 415 F.3d at 1314 (the specification is the “single best guide to the meaning of a disputed term”).

C. The claim language further supports Defendants’ construction.

11 The claim language itself also precludes the use of a control signal or an external crystal

12 to fix the frequency of the claimed “entire oscillator.” In this regard, claims 6 and 13 expressly

13 require that the “entire oscillator” vary in the same way as the CPU as changes occur in the PVT

14 parameters:

A microprocessor system comprising: ... an entire oscillator disposed upon said integrated circuit substrate and connected to said central processing unit, said oscillator clocking said central processing unit at a clock rate and being constructed of a second plurality of electronic devices, thus varying the processing frequency of said first plurality of electronic devices [i.e., the CPU] and the clock rate of said second plurality of electronic devices in the same way as a function of parameter variation in one or more fabrication or operational parameters associated with said integrated circuit substrate ...

20 Ex. A (’336 patent) at claims 6, 13.

21 Unlike the claimed “entire oscillator” whose frequency (recited in these claims as the

22 “clock rate”) varies because it is determined by the PVT parameters, an oscillator whose

23 frequency is determined by an external crystal is fixed.7 As a result, that frequency does not (and

24 cannot) vary with changes in the PVT parameters, as is expressly required by each of the asserted

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7 As applicants explained during prosecution, the meaning of “fixed” does not preclude small variations in oscillator frequency: “crystals are by design fixed-frequency devices whose oscillation frequency is designed to be tightly controlled and to vary minimally due to variations

in manufacturing, operating voltage and temperature.” Ex. D at 3-4 (TPL853_00002428).

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1 claims. Id. Thus, the claim language itself dictates that an oscillator whose frequency is

2 determined by an external crystal or clock generator falls outside the scope of the claims. See

3 Phillips, 415 F.3d at 1314 (explaining that “the context in which a term is used in the asserted

4 claim can be highly instructive” to claim construction).

D. Defendants’ construction is consistent with all prior constructions of this term.

The “entire oscillator” claim terms of the ’336 patent have been construed in three prior

litigations. The table below lists the constructions adopted in each of these prior litigations:

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NDCA Construction (Judge Grewal)

EDTX Construction (Judge Ward)

ITC Construction (ALJ Gildea)

The term “entire oscillator” (in claims 6 and 13) is properly understood to exclude any external clock used to generate the signal used to clock the CPU.

Ex. J (Dkt. No. 646 jury instructions) at 26; Ex. K (Dkt. No. 616 Order re Emergency Motion) at 2.

“a ring oscillator variable speed system clock that is located entirely on the same semiconductor substrate as the CPU and does not directly rely on a command input control signal or an external crystal/clock generator to generate a signal.” Ex. L (Dkt. No. 259) at 11-12 (Construing “entire ring oscillator” term in claim 1).

“an oscillator that is located entirely on the same substrate as the central processing unit and does not rely on a control signal or an external crystal/clock generator to generate a clock signal.” Ex. M (Order No. 31) at 40-41; Ex. N (Commission Opinion) at 16-25 (affirming construction).

As shown above, every Court that has construed the “entire oscillator” term has concluded that applicants’ prosecution history disclaimers require the construction to exclude reliance on an external clock to “generate” a clock signal.

In the Eastern District of Texas, Judge Ward construed the “entire ring oscillator” claim term in claim 1 to preclude reliance on either a control signal or an external crystal/clock generator to generate a clock signal. Ex. L (Dkt. No. 259) at 12. In reaching this conclusion, Judge Ward explained: “The Court agrees with the defendants that the applicant disclaimed the use of an input control signal and an external crystal/clock generator to generate a clock signal.” Id.

Similarly, in the United States International Trade Commission investigation,

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1 Administrative Law Judge Gildea construed “entire oscillator” as precluding reliance on either a

2 control signal or an external crystal/clock generator to generate a clock signal. Ex. M (Order No.

3 31) at 40-41; Ex. N (Commission Opinion) at 16-25. In a detailed opinion thoroughly analyzing

4 the intrinsic evidence, ALJ Gildea found that Plaintiffs clearly and unambiguously disclaimed any

5 oscillator that, even when fabricated on the same substrate as the CPU, relies on a control signal

6 or an external crystal or frequency generator. Ex. Q (Initial Determination) at 39-40 (finding that

7 “the essential point made by the applicants in seeking to gain acceptance” of their claims, and

8 their “unqualified statements in distinguishing” the prior art, constituted a “clear disavowal” of

9 claim scope). The Commission affirmed Judge Gildea’s construction in its entirety, reasoning

10 that the prosecution history resulted in disclaimer, and concluded that the claim language and the

11 specification also independently support the ALJ’s construction. Ex. N at 16-25.

12 Likewise, in the prior HTC v. TPL case, this Court instructed the jury that the term “entire

13 oscillator” excludes any external clock used to generate the CPU clock signal. Ex. J (Dkt. No.

14 646 jury instructions) at 26; Ex. K (Dkt. No. 616 Order re Emergency Motion) at 2; see also Ex.

15 O (Dkt. No. 585 (Order on HTC summary judgment motion) at 11, and n.24.

16 Thus, Defendants’ proposed construction is consistent with each of the prior constructions

17 as it reflects applicants’ prosecution history disclaimers. Defendants’ proposed construction also

18 provides clarification as to what it means “to generate” a signal – a phrase that is used in all three

19 prior constructions. Such clarification is necessary and appropriate, both because it more

20 specifically articulates the applicants’ disclaimers, and because it avoids potential future

21 argument or confusion over what “to generate” means.

22 For example, in the ITC investigation, notwithstanding the Administrative Law Judge’s

23 construction – which was premised upon the applicants’ disclaimers – TPL continued to argue

24 that the process of generating a clock signal did not include setting the frequency of the signal.

25 See, e.g., Ex. Q (Initial Determination) at 108-110. As a result, this issue required further

26 litigation, which led to the ALJ ultimately concluding that “the process of setting the frequency of

27 a clock signal and generating a clock signal are inseparable, because a clock signal must have a

28 frequency, since its sole purpose is to provide a frequency for timing the operation of devices.”

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1 Id. at 121-122. The Commission agreed. Ex. N at 29-30 (“We find that the ALJ’s application of

2 his construction of the ‘entire oscillator’ limitation to the Accused Products was correct, including

3 in particular his discussion of the intricate relationship between the generation and frequency of a

4 clock signal.”).

5 And, in the HTC case, the jury expressed uncertainty as to the meaning of the word

6 “generate” in the jury instructions and sought clarification of this term during deliberations. Ex. P

7 (Trial Tr.) at 1641:21-1644:14. Defendants’ proposed construction should avoid any such

8 potential confusion and aid the jury in this case because it clarifies that the term “generate”

9 includes both causing clock signal oscillation and controlling signal frequency, consistent with

10 applicants’ prosecution disclaimers.

11 Accordingly, because Defendants’ construction (1) is mandated by the repeated clear and

12 unambiguous prosecution history disclaimers, (2) is consistent with the specification’s teachings

13 and its criticisms of the prior art, (3) finds confirmation in the plain language of the claims, and

14 (4) is consistent with and further clarifies each of the claim constructions adopted in prior

15 litigation for entire oscillator claim terms, Defendants’ construction should be adopted.

E. Plaintiffs’ construction is incorrect.

17 Plaintiffs’ construction merely requires that the claimed oscillator be “located entirely on

18 the same semiconductor substrate as the [central processing unit].” That cannot be correct

19 because the intrinsic evidence leaves no doubt that the applicants surrendered far more during

20 prosecution to secure allowance of the ’336 patent. As discussed above, the applicants repeatedly

21 distinguished their claimed oscillator from prior art clocks on the basis that their oscillator does

22 not rely on a crystal, generator, or control signal to cause clock signal oscillation or control clock

23 signal frequency. Plaintiffs cannot reclaim what they surrendered because that would eviscerate

24 the patent’s public notice function, which “requires that a patentee be held to what he declares

25 during the prosecution of his patent.” See Springs Window Fashions LP v. Novo Indus., L.P., 323

Case3:12-cv-03880-VC Document110 Filed08/04/15 Page24 of 28

1 F.3d 989, 995 (Fed. Cir. 2003).8

2 That Plaintiffs’ construction would cover architectures well-known in the prior art long

3 before the ’336 patent is a further indication that it is incorrect. See Amhil Enters. Ltd. v. Wawa,

4 Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996)(construing claim term to avoid prior art of record). For

5 example, the Talbot9 prior art patent that is addressed in the file history discloses a phase-locked

6 loop (“PLL”) structure containing an on-chip “oscillator” or “clock.” Ex. H (U.S. Patent No.

7 4,689,581 (“Talbot”)) at 3:1-4 (“As is clear from Fig. 1, all of the components of the timing

8 apparatus 4 are on the single silicon chip and the timing apparatus 4 has been designed such that

9 it does not require any components external to chip 1.”), Fig. 1; see also Ex. I (U.S. Patent No.

10 3,967,104 (issued in June 1976 and cited on the front cover the ’336 patent)) at 1:8-12, 12:5-19

11 and Fig. 4a (disclosing oscillator system clock on same single chip as processor). Plaintiffs’

12 construction should be rejected for all of the foregoing reasons.

For the foregoing reasons, Defendants respectfully request that the Court adopt their

V . CONCLUSION

15 proposed claim construction.

Dated: August 4, 2015

DLA PIPER LLP (US)

/s/ Aaron Wainscoat

Mark D. Fowler (SBN 124235) Aaron Wainscoat (SBN 218337) Erik R. Fuehrer (SBN 252578) 2000 University Avenue

East Palo Alto, CA 94303 Tel. (650) 833-2000

Fax (650) 833-2001

8 Plaintiffs’ attempt to undo their disclaimers also contradicts their prior litigation position. In the

HTC litigation, Plaintiffs proposed that the “entire oscillator” term be given Judge Ward’s

24 25 26 27

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construction, which requires “an oscillator that is located entirely on the same semiconductor substrate as the CPU and does not directly rely on a command input control signal or an external crystal/clock generator to generate a clock signal.” See C.A. 5:08-cv-00882-PSG, D.I. 228 at 17-19.

9 While the issue of whether Talbot disclosed a ring oscillator was contested in the HTC litigation

(see C.A. 5:08-cv-00877-PSG, D.I. 357 at 9-12), this issue is irrelevant here because claims 6 and

13 of the ’336 patent are not limited to ring oscillators.

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1 2 3 4 5 6 7 8 9

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Dated: August 4, 2015

James M. Heintz (pro hac vice) 11911 Freedom Dr.

Reston, VA 20190

Tel. (703) 733-4000

Fax (703)733-5000

Robert C. Williams

401 B Street, Suite 1700 San Diego, California 92101 Tel. (619) 699-2700

Fax (619) 699-2701

Attorneys for Defendants

SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC.

MCDERMOTT WILL & EMERY LLP

/s/ Charles M. McMahon MCDERMOTT WILL & EMERY LLP Charles M. McMahon (pro hac vice) cmcmahon@mwe.com

Hersh H. Mehta (pro hac vice) hmehta@mwe.com

227 West Monroe Street

Chicago, IL 60606

[Tel.] (312) 372-2000

[Fax] (312) 984-7700

Fabio E. Marino (SBN 183825) fmarino@mwe.com

L. Kieran Kieckhefer (SBN 251978) kkieckhefer@mwe.com

275 Middlefield Road, Ste. 100 Menlo Park, CA 94025

[Tel.] (650) 815-7400

[Fax] (650) 815-7401

BRINKS GILSON & LIONE

William H. Frankel (pro hac vice) wfrankel@brinksgilson.com Robert Mallin (pro hac vice) rmallin@brinksgilson.com

NBC Tower, Suite 3600

455 N. Cityfront Plaza Drive Chicago, IL 60611

[Tel.] (312) 321-4200

[Fax] (312) 321-4299

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1 2 3 4 5 6 7 8 9

Dated: August 4, 2015

SHEPPARD MULLIN RICHTER & HAMPTON Scott R. Miller (SBN 112656) smiller@sheppardmullin.com

333 South Hope Street, 43rd Floor

Los Angeles, CA 90071 [Tel.] (213) 617-4177 [Fax] (213) 620-1398

Attorneys for Defendants,

ZTE CORPORA TION and ZTE (USA) INC.

STEPTOE & JOHNSON LLP

/s/ Timothy C. Bickham Timothy C. Bickham

Steptoe & Johnson LLP

1330 Connecticut Avenue, NW Washington, DC 20036 Telephone: (202) 429-5517 Facsimile: (202) 429-3902

Attorneys for Defendants

HUAWEI TECHNOLOGIES CO., LTD., HUAWEI DEVICE CO., LTD.,

HUAWEI DEVICE USA INC., FUTUREWEI TECHNOLOGIES, INC., and HUAWEI TECHNOLOGIES USA INC.

FISH & RICHARDSON P.C.

/s/ Wasif Qureshi

Michael J. McKeon, pro hac vice mckeon@fr.com

Christian A. Chu (CA SBN 218336) chu@fr.com

Richard A. Sterba, pro hac vice sterba@fr.com

FISH & RICHARDSON P.C.

1425 K Street, NW, Suite 1100 Washington, DC 20005

Telephone: (202) 783-5070 Facsimile: (202) 783-2331

Wasif Qureshi, pro hac vice qureshi@fr.com

FISH & RICHARDSON P.C. 1221 McKinney Street, Suite 2800 Houston, TX 77010

Telephone: (713) 654-5300 Facsimile: (713) 652-0109

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17 Dated: August 4, 2015 18

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DLA PIPER LLP (US) EAST PALO ALTO

Dated: August 4, 2015

Olga I. May (CA SBN 232012) omay@fr.com

FISH & RICHARDSON P .C. 12390 El Camino Real

San Diego, CA 92130 Telephone: (858) 678-4745 Facsimile: (858) 678-5099

Attorneys for Defendants

LG ELECTRONICS, INC. and LG ELECTRONICS USA. INC.

TURNER BOYD LLP

/s/ Jennifer Seraphine Jennifer Seraphine 702 Marshall Street Suite 640

Redwood City, CA 94063 Telephone: (650) 839-5070

Attorneys for Defendants

GARMIN INTERNATIONAL, INC. and GARMIN USA, INC.

COOLEY LLP

/s/ Matthew J. Brigham (with permission) Cooley LLP

Matthew J. Brigham (SBN 191428) mbrigham@cooley.com

3175 Hanover Street

Palo Alto, CA 94304-1130 Telephone: (650) 843-5000 Facsimile: (650) 849-7400

Stephen R. Smith (pro hac vice) stephen.smith@cooley.com 1299 Pennsylvania Ave., NW Suite 700

Washington, DC 20004 COOLEY LLP

Telephone: (703) 456-8000 Facsimile: (703) 456-8100

Attorneys for Defendants

NINTENDO CO., LTD and NINTENDO OF AMERICA INC.

-22-

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF CASE NOS.: 3:12-CV-03865; -03870; -03876; -03877; -03880; -03881

Case3:12-cv-03880-VC

Document110

Filed08/04/15 Page27 of 28

Dated: August 4, 2015

1 2 3 4 5 6 7 8 9

DLA PIPER LLP (US) EAST PALO ALTO

ATTESTATION

I, Wasif Qureshi, am the ECF User whose ID and password are being used to file this Defendants’ Opening Claim Construction Brief. In compliance with Civil Local Rule 5-1(i)(3), I hereby attest that the signatories listed above have read and approved the filing of this brief.

Case3:12-cv-03880-VC Document110 Filed08/04/15 Page28 of 28

Dated: August 4, 2015

FISH & RICHARDSON P.C.

/s/ Wasif Qureshi

Wasif Qureshi, pro hac vice qureshi@fr.com

FISH & RICHARDSON P.C. 1221 McKinney Street, Suite 2800 Houston, TX 77010

Telephone: (713) 654-5300 Facsimile: (713) 652-0109

Attorneys for Defendants

LG ELECTRONICS, INC. and LG ELECTRONICS USA. INC.

-23-

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF CASE NOS.: 3:12-CV-03865; -03870; -03876; -03877; -03880; -03881