nothing new on pacer as of a few minutes ago

We all know you are attempting to generate trading interest. Not fooling anyone

PLAINITIFFS’ MOTION FOR DE NOVO DETERMINATION OF DISPOSITIVE MATTER REFERRED TO MAGISTRATE JUDGE, OR, IN THE ALTERNATIVE, MOTION FOR RELIEF FROM NONDISPOSITIVE PRETRIAL ORDER OF MAGISTRATE JUDGE

DATE: Nov. 19, 2015

TIME: 10:00am

PLACE: Courtroom 4 JUDGE: Hon. Vince Chhabria

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 1 of 21

(Counsel listed on signature page)

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

TECHNOLOGY PROPERTIES LIMITED

LLC, et al.,

Plaintiffs, v.

Case No. 3:12-cv-03865-VC (PSG)

PLAINITIFFS’ MOTION FOR DE NOVO DETERMINATION OF DISPOSITIVE MATTER REFERRED TO MAGISTRATE JUDGE, OR, IN THE ALTERNATIVE, MOTION FOR RELIEF FROM NONDISPOSITIVE PRETRIAL ORDER OF MAGISTRATE JUDGE

DATE: Nov. 19, 2015

TIME: 10:00am

PLACE: Courtroom 4 JUDGE: Hon. Vince Chhabria

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

HUAWEI TECHNOLOGIES CO., LTD., HUAWEI DEVICE CO., LTD., HUAWEI DEVICE USA INC., FUTUREWEI TECHNOLOGIES, INC., HUAWEI TECHNOLOGIES USA INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs, v.

ZTE CORPORATION and ZTE (USA) INC.,

Defendants. TECHNOLOGY PROPERTIES LIMITED

LLC, et al.,

Plaintiffs, v.

SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS

AMERICA, INC.,

Defendants.

PLAINTIFFS’ OBJECTIONS TO THE CLAIM CONSTRUCTION R&R

Case No. 3:12-cv-03877-VC (PSG)

CASE NOS. 3:12-CV-03865, 3876, 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 2 of 21

TECHNOLOGY PROPERTIES LIMITED

LLC, et al.,

Plaintiffs, v.

LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

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

Plaintiffs, v.

NINTENDO CO., LTD. and NINTENDO OF AMERICA, INC.,

Defendants.

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

PLAINTIFFS’ OBJECTIONS TO THE

CLAIM CONSTRUCTION R&R ii

CASE NOS. 3:12-CV-03865, 3876, 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 3 of 21

TABLE OF CONTENTS

NOTICE OF MOTION AND MOTION ........................................................................................

STATEMENT OF RELIEF ............................................................................................................

MEMORANDUM IN SUPPORT................................................................................................... 1

I.

II.

III.

IV.

INTRODUCTION .............................................................................................................. 1 PROCEDURAL POSTURE ............................................................................................... 2 OVERVIEW OF THE ’336 PATENT................................................................................ 3 APPLICABLE LAW .......................................................................................................... 4

A. Objecting to a Magistrate Judge’s Order ................................................................ 4

B. Claim Construction Law ......................................................................................... 4

ARGUMENT ...................................................................................................................... 5

A. The R&R Issued by Judge Grewal is Case Dispositive and therefore

the Construction of the Entire Oscillator Term is Subject to

De Novo Review ..................................................................................................... 6

B. The Applicants Did Not Make the Alleged Disclaimers ........................................ 7

1. Magar .......................................................................................................... 8

2. Sheets ........................................................................................................ 11

PLAINTIFFS’ OBJECTIONS TO THE

CLAIM CONSTRUCTION R&R iii

VI. CONCLUSION................................................................................................................. 14 CERTIFICATE OF SERVICE ..................................................................................................... 17

CASE NOS. 3:12-CV-03865, 3876, 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 4 of 21

TABLE OF AUTHORITIES

Cases:

Maisonville v. F2 Am., Inc., 902 F.2d 746 (9th Cir. 1990) .............................................................

North Am. Container Inc. v. Plastipak Packaging Inc., 415 F.3d 1335 (Fed. Cir. 2005) ........... 4-5

Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003).............................................

Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012)............................... 4

United States v. Rivera-Guerrero, 377 F.3d 1064 (9th Cir. 2004) ............................................. 4,

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ........................................... 4

Statutes:

10 28 USC § 636(b)(1)(A) ............................................................................................................... 4, 6

Other Authorities:

Civil L.R. 72 ................................................................................................................................... FED. R. CIV. P. 72 ........................................................................................................................ 4, 6

FED. R. CIV. P. 72(a) .................................................................................................................... 5-6

FED. R. CIV. P. 72(b) ....................................................................................................................... 6

FED. R. CIV. P. 72(b)(3) .................................................................................................................. 5

Patent L.R. 4-3(c).........................................................................................................................6-7

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 5 of 21

NOTICE OF MOTION AND MOTION

TO THE COURT AND ALL COUNSEL OF RECORD:

NOTICE IS HEREBY GIVEN that on November 19, 2015, at 10:00 AM, or as soon thereafter as counsel may be heard in Courtroom 4 of the above-titled court, located at 450 Golden Gate Avenue San Francisco, CA 94102, Plaintiffs will and hereby do move the Court for a de novo determination of dispositive matter referred to magistrate judge, or, in the alternative, motion for relief from non-dispositive pretrial order of magistrate judge, pursuant to Civil L.R. 72.

This motion is based upon this notice, the accompanying memorandum of points and authorities, the accompanying declaration of Barry Bumgardner, all pleadings, papers and records on file in this action, including the record of the Markman hearing held in front of Judge Paul Grewal on September 18, 2015, and any oral argument presented at the hearing on this matter.

STATEMENT OF RELIEF

For the reasons set forth below, Plaintiffs seek a de novo review of the Report & Recommendation of Judge Grewal regarding his construction of the term “entire oscillator.”

MEMORANDUM IN SUPPORT

I. INTRODUCTION

On September 22, 2015, Judge Grewal issued a “Claim Construction Report and Recommendation” (hereinafter the “R&R”) construing the term “entire oscillator disposed upon said integrated circuit substrate” of U.S. Pat. No. 5,809,336 (the “’336 Patent”). See Ex. A1 (Dkt. 104,2 Report & Recommendation). Judge Grewal’s R&R improperly finds disclaimer associated with the “entire oscillator” term where none exists, and, importantly, has the effect of granting summary judgment of non-infringement in favor of the Defendants in each of the above-styled

All exhibits cited in this brief are attached to the accompanying Declaration of Barry J. Bumgardner in Support of Plaintiffs’ Motion for De Novo Determination.

Unless otherwise indicated, docket numbers refer to documents from Technology Properties Ltd., et al. v. Samsung Electronics Co., Ltd., Case. No. 3:12-cv-3877.

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 6 of 21

cases. In addition, even if subject matter was disclaimed during the prosecution of the ’336

Patent, the disclaimer certainly is not as broad as the one described in the R&R. As a result of

the dispositive nature of this issue, Plaintiffs move for a de novo determination of the meaning of

the “entire oscillator” term. Should the Court consider the R&R to be non-dispositive, Plaintiffs

move in the alternative that the Court find that Judge Grewal’s R&R was clearly erroneous.

In the parties’ claim construction briefing, both Defendants (who submitted a joint claim

construction brief) and Plaintiffs agreed principally on the meaning of the sole disputed term, an

“entire oscillator disposed upon said integrated circuit” as “an oscillator that is located entirely

on the same semiconductor substrate as the central processing unit.” Plaintiffs argued this

should have been the complete construction of the term. Defendants, on the other hand, argued

that the construction should include additional language – “and does not rely on a control signal

or an external crystal/clock generator to cause clock signal oscillation or control clock signal

frequency” – to reflect subject matter that was “disclaimed” during the prosecution of the ’336

Patent. Ultimately, Judge Grewal agreed with the parties as to what the “entire oscillator” was –

“an oscillator that is located entirely on the same semiconductor substrate as the central

processing unit”, but came to his own conclusion as to the disclaimer, finding that the claimed

“entire oscillator” was one “that does not require a control signal and whose frequency is not

fixed by any external crystal.” Plaintiffs object to Judge Grewal’s claim construction.

II. PROCEDURAL POSTURE

alleging infringement of the ’336 Patent. The suits, originally filed on July 24, 2012, were

stayed pending an investigation at the International Trade Commission (the “ITC Investigation”).

The ITC Investigation concluded on March 21, 2014, after which the stay was lifted in the

California Actions. In addition to the ITC Investigation and California Actions, a trial was held

in the Northern District of California, with Plaintiff HTC Corp. seeking a declaratory judgment

of non-infringement and Defendants (the Plaintiffs in the California Actions) pursuing a

counterclaim of infringement. The trial, held in front of Judge Grewal, resulted in a jury finding

of infringement of certain HTC products. While on appeal, Plaintiffs and HTC settled their

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 2 3877, 3880, 3881-VC (PSG)

Each of the above-styled cases (collectively, the “California Actions”) is a civil action

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 7 of 21

dispute. On October 17, 2014, the California Actions subject to the present motion were

consolidated in front of Judge Grewal for pretrial matters. See Dkt. 16.

After the parties exchanged simultaneous opening and responsive claim construction

briefs (See, Exs. B-E, Dkts. 94, 95, 96, and 97), a Markman hearing was held on September 18,

2015, in front of Judge Grewal. On September 22, Judge Grewal issued his R&R, providing a

construction of the “entire oscillator” term. As a result of this ruling, Plaintiffs and four of the

five Defendants (excepting Huawei) agreed to move to stay the underlying actions, with the

exception of claim construction objections, and stipulated that under the construction

recommended by Judge Grewal in the R&R, “all accused products of all [moving Defendants] do

not infringe the asserted claims.”3 See Ex. F, Dkt. 105 (“Joint Motion to Stay”).

III. OVERVIEW OF THE ’336 PATENT

August 3, 1989. See Ex. H, U.S. Pat. No. 5,809,336. While pending at the United States Patent

and Trademark Office (“USPTO”), the patent examiner contested the patentability of the

pending claims, issuing four rejections prior to ultimately granting the patent. Applicants

responded by distinguishing the claims of the ’336 Patent from the cited references. After

adding the limitations of a then pending dependent claim regarding a second independent clock

for clocking external devices at the behest of the patent examiner, the application was allowed.

The ’336 Patent has been involved in litigation both in this district and the Eastern District of

Texas, as well as at the ITC. It has been the subject of six reexamination requests, resulting in

two reexaminations certificates. In total, the ’336 Patent has already overcome more than 600

prior art references that were raised against it during prosecution and/or reexamination.

The “entire oscillator” term has been construed several times. The constructions reached

by the various tribunals that have looked at the issue are found in Plaintiffs’ Opening Markman

The ’336 Patent issued on September 15, 1998 and is based on an application filed on

On Friday, October 2, 2015, Judge Grewal granted a contested motion staying Plaintiffs’ case against Huawei. See Ex. G, Technology Properties Ltd., et al. v. Huawei Technologies Co., Ltd. et al., Case. No. 3:12-cv-3865, Dkt. 104. In each of the above cases, Plaintiffs assert independent claims 6 and 13, along with dependent claims 7, 9, 14, and 15 (the “Asserted Claims”).

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 3 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 8 of 21

Brief. See Ex. C at pp. 1-5 (presenting a summary of how other tribunals have treated the “entire

oscillator” term). Notably, Judge Grewal’s recommended construction of “entire oscillator” does

not comport with any of these prior constructions, including the one issued by Judge Grewal in the HTC case.

IV . dispositive, the district judge reviews the order to determine whether the magistrate’s decision

was clearly erroneous. Id. When the magistrate judge rules on a dispositive motion, the district

APPLICABLE LA W

A. Objecting to a Magistrate Judge’s Order A party may object to a magistrate judge’s order. FED.R.CIV.P.72. If the matter is non-judge must determine de novo any part of the magistrate’s order that was objected to. Id.

Although 28 USC § 636(b)(1)(A) contains a list of “dispositive” motions, the list is not all-

inclusive. In the 9th Circuit, courts look to the effect of an order to determine if the matter is

dispositive. United States v. Rivera-Guerrero, 377 F.3d 1064, 1068 (9th Cir. 2004).

B. Claim Construction Law

This Court is generally familiar with the various tenets of claim construction, so a general

discussion of the applicable law is not included. Prosecution disavowal/disclaimer, however, is a

more nuanced subject. While the words of a claim are normally given their customary and

ordinary meaning, “there are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows [also referred to in cases as “disclaims”] the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.

2012), citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996). The

standard for disavowal/disclaimer of claim scope is exacting. Thorner, 669 F.3d at 1366. “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.” Id.

Any disclaimers that are found must be the result of statements made by the

patentee/applicant during the prosecution of the patent at issue. North Am. Container Inc. v.

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 4 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 9 of 21

Plastipak Packaging Inc., 415 F.3d 1335, 1345-46 (Fed. Cir. 2005). As stated by Defendants in

their responsive brief: The focus must be on the arguments applicants made to distinguish [the prior art at issue], as those are what define the disclaimer. . . . As the Federal Circuit made clear in North Am. Container, for example, the scope of the disclaimers must be measured by what the applicants said during prosecution, not by what was necessary to distinguish the claims from the prior art. 415 F.3d at 1340-41.

Ex. D, Defendants’ Responsive Claim Construction Brief, Dkt. 96 at 5 (emphasis in original). Thus, in determining what, if any disavowals/disclaimers were made by patentee/applicant during the prosecution of a patent, the analysis must look to the words used by patentee/applicant, as those words “define” the disclaimer. Notably, though, to qualify as disclaimer, these statements must be “clear and unmistakable” as the Federal Circuit has “consistently rejected prosecution statements too vague or ambiguous to qualify as a disavowal of claim scope.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003). V . ARGUMENT

These objections are made to Judge Grewal’s R&R regarding construction of the claim term “an entire oscillator disposed upon a single integrated circuit.” Judge Grewal construed the “entire oscillator” term as “an [oscillator] located entirely on the same semiconductor substrate as the [central processing unit] that does not require a control signal and whose frequency is not fixed by any external crystal.” The basis of Judge Grewal’s construction is his erroneous finding that Applicants made certain disclaimers during the prosecution of the ’336 Patent. Based upon the erroneous finding of disclaimer, Judge Grewal improperly included negative limitations into the claim construction (i.e., “that does not require a control signal and whose frequency is not fixed by any external crystal”). Because Judge Grewal’s claim construction (if adopted) has the effect of being case dispositive, thus the Court should review it under a standard of de novo review. FED. R. CIV. P. 72(b)(3). Even if this Court determines that the issue is not properly classified as dispositive, Judge Grewal’s R&R should be modified because it is clearly erroneous. FED.R.CIV.P.72(a).

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 10 of 21

1 A. The R&R Issued by Judge Grewal is Case Dispositive and therefore the

The clear impact of Judge Grewal’s construction of the “entire oscillator” term is

summary judgment of non-infringement in favor of Defendants, thus making this a dispositive

issue requiring de novo review. The Federal Rules distinguish between the standard of review

required for objections to a magistrate judge’s order on dispositive and non-dispositive matters.

When an objection to a magistrate judge’s order is properly made, orders which are dispositive

receive a de novo determination by the District Judge, who may accept, reject, or modify the

magistrate judge’s opinion. FED. R. CIV. P. 72(b). Those issues which are non-dispositive are

entitled to review by the district judge under a “clearly erroneous” standard. FED. R. CIV. P. 72(a). While Rule 72 does not indicate which matters are dispositive, 28 U.S.C. § 636(b)(1)(A)

12 lists several motions which are considered dispositive and entitled to de novo review. This list is not exhaustive. In the 9th Circuit, courts look to the effect of an order to determine if the matter is dispositive to a claim or defense of a party. Rivera-Guerrero, 377 F.3d at 1067-68. “[W]e do not simply look to the list of excepted pretrial matters in order to determine the magistrate judge's authority. Instead, we must look to the effect of the motion, in order to determine whether it is properly characterized as ‘dispositive or non-dispositive of a claim or defense of a party.’”Id. at 1068, citing Maisonville v. F2 Am., Inc., 902 F.2d 746 (9th Cir. 1990). The plain effect of Judge Grewal’s R&R is judgment of non-infringement in favor of

Defendants. Three days after Judge Grewal’s issued the R&R, the parties (with the exception of

Huawei), filed a joint stipulation stating that “the parties hereby stipulate that all accused

products of all Defendants in this Action do not infringe the asserted claims of U.S. Patent

5,809,336 under the Entire Oscillator Construction.” Dkt. 105 at ¶4. It is indisputable that the

effect of the R&R is dispositive, and Plaintiff’s timely objection to the R&R requires de novo

review by this Court.

This situation is not unusual, as claim construction rulings are frequently case dispositive.

In fact, Northern District Patent L.R. 4-3(c) expressly recognizes the potentially dispositive nature of claim construction, requesting the parties to identify which of the claim terms whose

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 6 3877, 3880, 3881-VC (PSG)

Construction of the Entire Oscillator Term is Subject to De Novo Review.

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 11 of 21

construction may be dispositive. In this particular instance, Defendants identified the “entire

oscillator” construction as potentially dispositive. See Ex. I, Joint P.R. 4-3 statement, Dkt. 72 at

4. Evidencing this belief, Defendants directed a significant amount of their presentation at the

Markman hearing toward non-infringement. During the “tutorial” phase of the Markman

5 hearing, Defendants spent significant time discussing the nature of their own products, a subject

which had nothing to do with claim construction and everything to do with non-infringement.

During the “argument” phase of the Markman hearing, counsel for Defendants spoke at length

about the importance of this claim term toward non-infringement. Defendants also harkened to

non-infringement in their opening Markman brief, explicitly comparing the ’336 Patent to

accused products. Ex. B at 13-14. Having prevailed before Judge Grewal on the “entire

oscillator” construction, Defendants effectively secured a judgement of non-infringement, which

requires this Court to review Judge Grewal’s determination de novo.

B. The Applicants Did Not Make the Alleged Disclaimers Judge Grewal’s construction of “entire oscillator” is based on a finding that the

Applicants made certain “disclaimers” while distinguishing their invention from two prior art references: U.S. Pat. No. 4,503,500 (“Magar”) and U.S. Pat. No. 4,670,837 (“Sheets”). 4 R&R at

4. Plaintiffs dispute that any disclaimer actually occurred during Applicants’ correspondence

with the USPTO. Indeed, several courts (as well as Judge Grewal himself) have previously construed the “entire oscillator” term, and none of them found the sweeping disclaimer

advocated by Judge Grewal in his R&R. This record begs the obvious question – how can there

be “clear and unmistakable” disavowal of the broad scope advocated by Judge Grewal if several, experienced patent judges have reviewed the same record as Judge Grewal and reached a different conclusion? The answer is readily apparent – no clear and unmistakable disavowal exists in the patent prosecution, and Judge Grewal’s finding of clear and unmistakable disclaimer is erroneous. Applicants distinguished Magar and Sheets on the basis of existing claim limitations. But Plaintiffs refer to those who prosecuted the ’336 Patent in the USPTO as “Applicants”, as the entities that owned the application that became the ’336 Patent were different entities than Plaintiffs.

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 7 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 12 of 21 even if some disclaimers exist (which Plaintiffs dispute), they are not as broad as those found by

Judge Grewal. As discussed in detail below, even if one does find that Applicants did disclaim

“something” during the prosecution of the ’336 Patent, the subject matter actually disclaimed is

far less than that described in the R&R. At most, the proper scope of disclaimer should be an

oscillator “that does not require command, manual, or programmed inputs to change frequency

and excluding external crystals/clocks to generate a clock signal.”

1. Magar

Judge Grewal’s construction includes the limitation that the oscillator of the ’336 Patent

cannot have a frequency that is “fixed by any external crystal.” The R&R purports to justify this

limitation by examining the arguments made to distinguish the present invention from Magar.

The statements made by the Applicants, however, do not support the construction provided,

particularly if examined in light of the Magar disclosure.

Magar, attached as Ex. J, was drawn to a specialized processor that would be optimized

for performing certain arithmetic tasks. Ex. J, 6:34, et seq. In explaining the specialized

processor, Magar describes a particular clocking scheme that involves an external crystal and a

component called “CLOCK GEN,” seen in the bottom right of Figure 2a. Ex. J, Fig 2a and

15:23-41. Figures 2 and 3 of Magar, along with column 15 of Magar, demonstrate how Magar

utilizes the external crystal to generate a 20MHz clock signal. That clock signal drives the on-

chip “CLOCK GEN” circuitry shown in Figure 2 and diagramed in Figure 3. Ex. J at Figs. 2a, 3,

15:23-41. After receiving the 20MHz signal via pins X1 and X2, the “CLOCK GEN” circuitry

in Magar creates four quarter-cycle clocks seen in Q1-Q4, having a period of 200 nanoseconds (a

5MHz clock signal). Id. at 15:23-35. Importantly, there is no on-chip oscillator in Magar.

Rather, the clock signal for the CPU is generated by the off-chip crystal. Stated differently,

Magar is a one-oscillator system. This is critical to understanding the statements made to the

USPTO.

As explained in Plaintiffs’ responsive brief to Judge Grewal (see Ex. E at 2-9), the

statements relied upon by Defendants in their briefing and Judge Grewal in the R&R do not

support a finding of disclaimer. In fact, Applicants’ statements during prosecution distinguish

PLAINTIFFS’ OBJECTIONS TO THE CASE NOS. 3:12-CV-03865, 3876, CLAIM CONSTRUCTION R&R 8 3877, 3880, 3881-VC (PSG)

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 13 of 21

Magar based on existing claim limitations, and clarify that (unlike Magar) the claimed invention

does not rely on an external oscillator to generate a clock signal. The oscillator in the claimed invention is on-chip – and, thus, the clock signal is generated on-chip, while Magar’s clock is

off-chip, a difference specifically captured by the explicit language of the claim.

Judge Grewal, however, cites four sections of Applicants’ responses to Magar to support

his construction, alleging that the statements made to the USPTO require a finding of disclaimer.

Yet, when examined closely, the statements do not create disclaimer individually, nor do they

create disclaimer when taken as a whole.

Judge Grewal first cites the Applicants’ argument to the USPTO as found in their July 7,

1997 Office Action Response. See R&R at 4, lns. 14-18, see also Ex. K, July 7, 1997 Office

Action Response at 3-4. Judge Grewal alleges that this paragraph is an attempt to “distinguish

Magar by emphasizing that the clock disclosed in Magar was fixed by a crystal that was external

to the microprocessor, unlike their on-chip variable speed clock.” R&R at 4. Judge Grewal is

correct that it the Applicants argued that Magar used an external crystal, and that those crystals

are fixed frequency. Further, Applicants state that the microprocessor clock is frequency

controlled by a crystal. But, a “clock” is not the same thing as an oscillator. See Ex. K at 4,

(explaining Applicants’ position that all oscillators are clocks but not all clocks are oscillators).

The statement above, made in reference to Magar, makes sense because Magar did not have an on-chip oscillator, rather it only contained the on-chip CLOCK GEN circuitry. Thus, the

statement above does not support Judge Grewal’s construction that the “entire oscillator” is not

“fixed by any off-chip oscillator” simply because the Applicants did not disclaim any interaction

between an off-chip oscillator and an on-chip oscillator.

Judge Grewal continues that “applicants also argued that the Magar clock could not

practice the claimed invention because of its reliance on a crystal, which by its nature cannot

vary its oscillation frequency.” R&R at 4. In support of this argument, Judge Grewal cites to

Applicants’ argument found in the R&R at 4-5. See Ex. K at 4. But once again, the statement by

the Applicants does not support Judge Grewal’s construction. Specifically, there is no mention

of an off-chip oscillator having any involvement with an on-chip oscillator. This makes sense

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 14 of 21

because Magar is a single-oscillator system. Applicants could not have disclaimed that the ’336

Patent’s oscillator’s frequency “is not fixed by any external crystal” because there was no

opportunity to do so, and they did not make such a clear, unambiguous statement at the USPTO. Judge Grewal notes that the USPTO “issued a second rejection based on Magar, and the Applicants responded by emphasizing again that the claimed invention did not rely on an

external crystal’s fixed frequency to set the clock’s frequency rate.” R&R at 5. Judge Grewal

cites the statement from the prosecution history found in the R&R at 5, lns. 8-10 for support. See Ex. L, February 10, 1998 Office Action Response at 4. But, the cited passage does not support the construction promoted by Judge Grewal. Although Applicants state that the frequency originates from an external crystal, they do not say anything about fixing a frequency of an on-chip oscillator. Lastly, Judge Grewal states that “[t]he applicants also disclaimed the use of an external crystal to cause clock signal oscillation,” citing a final passage from the prosecution history for support. See R&R at 5, citing Ex. L at 3. Here, as before, there is no oscillator on the Magar chip that can be controlled by the off-chip oscillator. Applicants clarify that the “clock generator” is not an entire oscillator in itself. They argue that Magar shows a crystal which is used to generate a clock, but say nothing of an off-chip oscillator fixing the frequency of an on-chip oscillator.

In the aggregate, the four statements relied upon by Judge Grewal do not and cannot

support the disclaimer featured in Judge Grewal’s construction. Indeed, Applicants’ statements

clearly distinguish the present invention from Magar on the basis of limitations already present in the claims at issue (e.g., varying frequency as a “function of parameter variation in one or more fabrication or operational parameters,” such as voltage or temperature). Applicants’ statements could support a construction that states that the clock signal provided to the CPU does not originate from or is not generated by an external oscillator. As discussed above, there is only a single oscillator in Magar that supplies a clock signal to the CPU, as is there in the claims of the ‘336 Patent. But, the construction found in the R&R contemplates the interaction of an on-chip oscillator with an off-chip one. The interaction of two oscillators was never discussed with respect to Magar, because the reference does not contemplate such an arrangement, just as the ‘336 Patent does not contemplate this arrangement. Yet, Judge Grewal found that, based onApplicants’ words, such subject matter was disclaimed. This is clear error: the interaction of two oscillators cannot be disclaimed if Applicants’ never mentioned this subject.

Finally, if any disclaimer with respect to Magar is appropriate, it is one that prohibits a

clock signal being generated from an off-chip oscillator. Not only would a limitation of “not

generated by an off-chip oscillator” be more consistent with the arguments presented to the

USPTO, it would also be consistent with prior constructions provided by the ITC, Judge Ward in

the Eastern District of Texas, and Judge Grewal himself in the HTC case. See Ex. B at 16, chart

listing prior claim constructions. 2.

Sheets

The second disclaimer found in Judge Grewal’s “entire oscillator” construction concerns

statements made by the Applicant in securing allowance of the ’336 Patent over Sheets. Based

on these statements, Judge Grewal found that the claimed “entire oscillator” term cannot “require a control signal.” But, a close review of the statements made by Applicant reveals that the Applicants made no such disavowal. Further, even if Applicant did disclaim subject matter, the scope of the disclaimer is materially narrower than what was found by Judge Grewal.

Sheets (attached as Ex. M) describes a system in which a “microprocessor controls the

clock frequency [of the microprocessor] based on the present rate of required microprocessor

activity.” Ex. M at Abstract. Thus, the goal of the invention described in Sheets is to save

energy by running the microprocessor at a lower clock speed when high performance is not

needed (and hence use less power). Id. Due to this variable speed processor, Sheets is unlike

Magar, whose clock is generated by a fixed frequency crystal.

Sheets accomplishes this goal by having the microprocessor periodically determine its

processing load. If the load is low, the microprocessor will reduce the clock frequency at which

it is driven. Id. at 1:45-57. Sheets achieves this reduction in clock frequency by operating with a

digital voltage controlled oscillator (“VCO”). Id. at 2:54-57. This oscillator generates the clock

signal used by the microprocessor in Sheets. Id.

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 16 of 21

In simpler terms, the computer system in Sheets can speed up or slow down based on

how much work it has to do. When the system runs faster, it consumes more power, but can

process more data. When it runs slower, it consumes less power, but processes less data. The

processor in Sheets makes the determination of how much work is queued up, then sets the VCO (which directly determines how fast/slow the system runs) accordingly.

The processor in Sheets causes the VCO to generate a clock speed at a particular

frequency by writing a “digital word” to the VCO. Id. at 1:60-68. As used in Sheets, a “digital

word” is simply a digital value (e.g., 234). Sheets makes clear that the processor writes the

digital word to the VCO in the same manner as the word would be written to RAM. So, just as

the processor can write/store data to memory, it can write digital data to the VCO. This digital

word is stored by the VCO and then used to compute the clock rate output by the VCO.

Judge Grewal’s R&R focuses on three paragraphs from the ’336 Patent’s file history

regarding Sheets. See R&R at 5-6, citing Ex. N, at 8, Ex. O, at 4, and Ex. K at 5. These

paragraphs are the (apparent) basis for Judge Grewal’s finding of disclaimer and are the same

passages cited by Defendants in their briefs. Relying on these paragraphs, Judge Grewal crafted a construction that excludes oscillators that “require a control signal” from the scope of the Asserted Claims, finding that Applicants disclaimed such material.

Plaintiffs disagree that these three paragraphs evidence any disclaimer, let alone a

disclaimer of the scope found by Judge Grewal. As discussed in Plaintiff’s responsive brief (see

Ex. E at 9-14), Applicants’ statements to the USPTO regarding Sheets evidence no more than the fact that Sheets does not meet the literal language of what became the Asserted Claims. The doctrine of prosecution disclaimer is meant to exclude subject matter that would otherwise be within the scope of the claims, but for the disclaimers. In Sheets, there is no disclosure of how Sheets’ oscillator can vary other than by having a digital word written to it. Thus, the Sheets

processor does not vary as a function of environmental or fabrication parameters, which is

explicitly required by the Asserted Claims. For this reason, Applicants’ comments should not be

read to disclaim subject matter that would otherwise be within the scope of the claims.

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 17 of 21

As Defendants repeatedly state, disclaimers that originate in prosecution arise from the

words used by Applicants. Assuming arguendo that Applicants disclaimed subject matter in

arguing for the allowance of the Asserted Claims over Sheets, the disclaimer found by Judge

Grewal goes far beyond what Applicants actually stated.

This disclaimer found by Judge Grewal is defective in two important aspects. First, it

applies to “control signals” generally. The universe of what can be considered a “control signal”

is large when compared to the specific inputs at issue in Sheets. Plaintiffs believe it is improper

to saddle Plaintiffs with the difference in scope between Sheet’s signals/inputs and general

“control signals” because Applicants never discussed “control signals” in the abstract, instead

specifically referring to “Sheet’s system for providing control signals.”5 That fact alone

demonstrates that Judge Grewal’s finding of disclaimer with respect to all “control signals” is not

proper.

Second, Judge Grewal’s construction prohibits the “entire oscillator” from “requiring” a

“control signal” for ostensibly any purpose. Again, as the cited arguments make clear, whatever

input/signals that were being disclaimed were only being used for the purposes of changing the

frequency/clock speed of the “external clock” at issue. A control signal could possibly be used

in conjunction with an oscillator for a number of reasons other than to control the speed of the

oscillator. Again, if Applicants’ words are to form the basis of the alleged disclaimers, the scope

1of the disclaimers must be commensurate with what was actually said. In this case, the scope of Applicants’ comments is limited to using specific inputs for changing the frequency of an

oscillator. Thus, finding disclaimer for the use of “control signals” for purposes other than

changing the frequency of the oscillator goes well beyond Applicants’ words and is improper.

A proper disclaimer should not be based on some judicially-created abstraction of

Applicants’ comments. Applicants’ specific statements refer to command, programmed, or

manual control inputs to change the frequency of the oscillator. To the extent any clear and

Applicants did refer to “Sheets’ system for providing clock control signals to an external clock . . . .” in the paragraph cited in the R&R on pp. 5-6. This reference to control signals was clearly limited to the ones discussed in Sheets and not to “control signals” generally.

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 18 of 21

unmistakable disclaimer was made, which Plaintiffs strongly dispute, it would necessarily relate

to only this subject matter.

Turning now to the particular words used by Applicants in discussing Sheets, the first

citation relied upon by Judge Grewal distinguishes Sheets from the Asserted Claims based on the “control information” found in Sheets. The discussion in this paragraph is not a generalized

discussion of “control information.” Rather, it is specific to the “control information” disclosed

in Sheets (i.e., the digital word written by the processor to the VCO). In the second citation relied upon by Judge Grewal, Applicants characterize the digital

word of Sheets as a “command input.” If a disclaimer is to be found in this citation, it must be

limited to an oscillator that requires “command inputs” to change the frequency. Again, these

“command inputs” refer to the disclosure in Sheets of the microprocessor writing a digital value

to the VCO. In this paragraph, Applicants did not mention “control signals.”

Finally, in the third and last paragraph cited by Judge Grewal with respect to Sheets,

Applicants state that the oscillator described in the Asserted Claims “does not require manual or

programmed inputs . . . to [vary in frequency].” Again, there is no discussion of “control

signals” in this portion of Applicant’s response. Rather, on the topic of “inputs”, the discussion

is limited to “manual or programmed inputs.” Thus, like the preceding citations, the statements

made by Applicants are far more limited than the disclaimer found by Judge Grewal.

In summary, the R&R finds the term “entire oscillator” does not include oscillators that

require a “control signal.” This finding is based on Applicants statements in distinguishing over

Sheets. But, Applicants’ never made such a sweeping disclaimer in the prosecution history. At

most, Applicants’ statements distinguished the claimed oscillator as one that does not require

“command, manual, and programmed inputs” to change its frequency. But even these statements are not clear and unmistakable disclaimers.

VI. CONCLUSION

As discussed above, Judge Grewal incorrectly found that Applicants disclaimed subject

matter during the prosecution of the patent application that ultimately became the ‘336 Patent.

During that prosecution, Applicants demonstrated that Magar and Sheets both fell outside the

Case 3:12-cv-03877-VC Document 107 Filed 10/06/15 Page 19 of 21

explicit requirements of the then pending claims. With respect to Magar, the Asserted Claims

require the “entire oscillator” to reside on the same chip as the CPU and to vary with the CPU as

a function of certain environmental and process related variables. The quartz oscillator in Magar

is neither on-chip nor can it vary like the claimed oscillator. The same goes for Sheets - it is an

off-chip oscillator that is not disclosed as varying like the oscillator recited in the Asserted

Claims. For these reasons, there is simply no cause to find that Applicants disclaimed subject

matter that would otherwise be captured by the Asserted Claims.

Further, despite Plaintiffs’ beliefs to the contrary, if Applicants did disclaim subject

matter that would otherwise be covered by the Asserted Claims, the scope of such disclaimer is

much narrower than that found by Judge Grewal. A review of the statements made by

Applicants demonstrates as much. With respect to Magar, Applicants’ statements all centered on the fact that the off-chip quartz oscillator in Magar could not generate a clock signal like the one described in the Asserted Claims. Thus, a disclaimer finding that the claimed oscillator does not include “external crystals/clocks to generate a clock signal” is more appropriate than the one

found in the R&R. With respect to Sheets, Applicants merely discussed Sheet’s use of

“command, manual, and programmed inputs” to “change the frequency” of the oscillator in

Sheets. Accordingly, if a disclaimer is to be found with respect to Sheets, it should only exclude

oscillators “that require command, manual, or programmed inputs to change frequency.”

Document 107 Filed 10/06/15 Page 20 of 21

Dated: October 6, 2015

Respectfully submitted,

/s/ Barry J. Bumgardner____________________

NELSON BUMGARDNER, P.C.

Edward R. Nelson, III (Pro Hac Vice) ed@nelbum.com

Brent Nelson Bumgardner (Pro Hac Vice) brent@nelbum.com

Barry J. Bumgardner (Pro Hac Vice) barry@nelbum.com

Thomas Christopher Cecil (Pro Hac Vice) tom@nelbum.com

Stacie Greskowiak McNulty (Pro Hac Vice) stacie@nelbum.com

John Murphy (Pro Hac Vice) murphy@nelbum.com

3131 West 7th Street, Suite 300 Fort Worth, Texas 76107 [Tel.] (817) 377-9111

[Fax] (817) 377-3485

BANYS, P.C.

Christopher D. Banys (SBN 230038) cdb@banyspc.com

Jennifer Lu Gilbert (SBN 255820) jlg@banyspc.com

Christopher J. Judge (SBN 274418) cjj@banyspc.com

Richard Cheng-hong Lin (SBN 209233) rcl@banyspc.com

1032 Elwell Court, Suite 100 Palo Alto, California 94303 [Tel.] (650) 308-8505

[Fax] (650) 353-2202

ALBRITTON LAW FIRM

Eric M. Albritton (Pro Hac Vice) ema@emafirm.com

P.O. Box 2649

Longview, Texas 75606

[Tel.] (903) 757-8449 [Fax] (903) 758-7397

Attorneys for Plaintiff

PHOENIX DIGITAL SOLUTIONS LLC

CASE NOS. 3:12-CV-03865, 3876, 16 3877, 3880, 3881-VC (PSG)

/s/ Charles T. Hoge (with permission)___________

KIRBY NOONAN LANCE & HOGE LLP

Charles T. Hoge (SBN 110696) choge@knlh.com

350 Tenth Avenue, Suite 1300 San Diego, California 92101 [Tel.] (619) 231-8666

Attorneys for Plaintiff

PATRIOT SCIENTIFIC CORPORATION

/s/ William L. Bretschneider (with permission)____

SILICON VALLEY LAW GROUP

William L. Bretschneider (SBN 144561) wlb@svlg.com

50 W. San Fernando Street, Suite 750 San Jose, California 95113

[Tel.] (408) 573-5700 [Fax] (408) 573-5701

Attorneys for Plaintiff

TECHNOLOGY PROPERTIES LIMITED LLC

CERTIFICATE OF SERVICE

I hereby certify that, on October 6, 2015, I caused the foregoing document to be served on counsel of record via the Court’s CM/ECF system.

Dated: October 6, 2015

By:

/s/ Barry J. Bumgardner Barry J. Bumgardner

PLAINTIFFS’ OBJECTIONS TO THE CLAIM CONSTRUCTION R&R

CASE NOS. 3:12-CV-03865, 3876, 3877, 3880, 3881-VC (PSG)

Parties = defendants

5. If Plaintiffs do not file an objection to the Claim Construction Report on or before October 6, 2015, or, if Plaintiffs timely file an objection to the Claim Construction Report and the Court does not reject or materially modify the construction of the term “an entire oscillator disposed upon said integrated circuit substrate”, and thereby accepts the Entire Oscillator Construction, the Parties will within, three (3) business days of (a) Plaintiffs’ failure to timely file an objection (i.e., October 9, 2015) or (b) the Court’s acceptance of the Entire Oscillator Construction, request the Court to enter final judgment of non-infringement in favor of Defendants in the form attached hereto as Exhibit A.