The Hon. Jeremy Fogel
HTC CORPORATION and HTC AMERICA, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION and ALLIACENSE
LIMITED,
Defendants.

BARCO, N.V.,
Plaintiff,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION and ALLIACENSE
LIMITED,
Defendants.

Plaintiffs Acer, Inc., Acer America Corporation and Gateway, Inc. (“Acer”), HTC Corp. and HTC America, Inc. (“HTC”) and Barco N.V. (“Barco”) (collectively, the “Plaintiffs”), along with Defendants Technology Properties Limited (“TPL”), Patriot Scientific Corporation, and Alliacense Limited (collectively, the “Defendants”) have met and conferred regarding the claim terms to be construed by the Court at the Markman hearing scheduled in all three related cases for May 10, 2011. The parties have agreed upon the majority of the claim terms that they would like the Court to construe but have been unable to reach an agreement regarding the remaining terms. The parties therefore respectfully request that the Court issue an order specifying the claim terms
it will construe.

I. AGREED-UPON TERMS FOR CONSTRUCTION

The parties have agreed1 that the Court should construe the following 10 claim terms: 1 Plaintiffs’ agreement and position as to the terms to be construed are based upon the current
1. “Push down stack connected to said ALU”
2. “Supply the multiple sequential instructions to said central processing unit
integrated circuit during a single memory cycle”
3. “Multiple sequential instructions”
4. “Instruction register”
5. “Separate direct memory access central processing unit”
6. “Ring oscillator”
7. “Clocking said CPU”
8. “External clock”
9. “As a function of parameter variation”
10. “Operates asynchronously to”
The parties further agree that the Court’s construction of “connected to” within Term 1 above, will apply in the same manner to Rows 3, 8, 9, 15, and 16, as numbered in Exhibit B attached to the parties’ Patent Local Rule 4-3 Joint Claim Construction Statement (or “JCCS”), filed on October 29, 2010.

II. REMAINING DISPUTE ON TERMS FOR CONSTRUCTION

Plaintiffs’ Position:
In addition, Plaintiffs propose that the following three parallel, case-dispositive terms be construed together in light of the new disclaimers made by Defendants during the reexamination proceedings that occurred after Judge Ward’s construction:  “An entire ring oscillator variable speed system clock in said single integrated
circuit” (Row 23 of Exhibit B in the JCCS);  “An entire oscillator disposed upon said integrated circuit substrate” (Row 19); scope of the case. As this Court is aware, Defendants’ motions to amend their infringement contentions were argued on April 22 and are currently under submission. If those motions are
granted beyond what Plaintiffs have agreed in their opposition papers filed on April 8, Plaintiffs may need to revisit the issue of which terms to be construed, as terms that are not being construed right now may have greater importance in light of the additional claims and/or products (if introduced into this case as a result of the Court’s ruling on Defendants’ motions to amend). Plaintiffs’ agreement and position as reflected in this joint statement, therefore, are contingent upon the assumption that no amendments to the currently in-effect infringement contentions will be allowed beyond those to which Plaintiffs have expressly agreed in their opposition papers.  “Providing an entire variable speed clock disposed upon said integrated circuit
substrate” (Row 28).2 As explained in the parties’ respective claim construction briefing, the single embodiment in the patents-in-suit discloses an on-chip “ring oscillator” that acts as a variable speed system
clock for the CPU. This single disclosure of “ring oscillator” (Row 22) (an agreed-upon term for construction in Part I) is the specification support for Rows 23, 19 and 28 quoted above. After Judge Ward’s claim construction ruling, Defendants distinguished prior art during reexamination proceedings by expressly representing to the Examiner that the disclosed and claimed “ring oscillator” is “non-controllable” and “variable based on the environment.” See Interview Summary, 2/12/08, Control No. 90/008,227. Based on Defendants’ express disclaimer, Plaintiffs argue in their consolidated claim construction brief that the oscillator or clock in each of Rows 23, 19 and 28 be limited, inter alia, as “non-controllable” and “variable based on the voltage, temperature and process parameters in the environment.” Defendants oppose this limitation, but in their claim construction briefs Defendants do not differentiate among Rows 23, 19 and 28 based on the differences in their claim language. The parties’ positions for Rows 22, 23, 19 and 28 are set forth in the table below (with differences shown in boldface and strikeouts): Claim term Plaintiffs’ Construction Defendants’ Construction Ring oscillator (Row 22) (An Agreed- Upon Term for Construction in Part I) An oscillator having a multiple, odd number of inversions arranged in a loop, wherein the oscillator is: (1) non-controllable; and (2) variable based on the temperature, voltage, and process parameters in the
environment An oscillator having a multiple, odd number of inversions arranged in a loop 2 Because Rows 23, 19 and 28 have similar language and raise the same claim construction disputes, Plaintiffs had proposed during meet-and-confer that only Row 23 be construed, but its construction would control the constructions of Rows 19 and 28. Row 23 was suggested as representative because it includes practically all of the disputed language. However, Defendants’ new position, articulated below, that the differences in language affect the claim construction issues appears to require that all three rows be construed. Claim term Plaintiffs’ Construction Defendants’ Construction An entire ring oscillator variable speed system clock in said single
integrated circuit (Row 23) 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 clock signal, wherein the ring oscillator variable speed system clock is: (1) noncontrollable; and (2) variable based on the temperature, voltage, and process parameters in the environment 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 clock signal An entire oscillator disposed upon said integrated
circuit substrate (Row 19) 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, wherein the oscillator is: (1) non-controllable; and (2) variable based on the temperature, voltage, and process parameters in the environment 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 Providing an entire variable speed clock disposed upon said integrated circuit substrate (Row 28) Providing a variable speed 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 clock signal, wherein the variable speed clock is: (1) non-controllable; and (2) variable based on the temperature, voltage, and process parameters in
the environment Providing a 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 clock signal The chart above shows that, despite the differences in claim language, each side has respectively proposed parallel constructions for Rows 23, 19 and 28 with disputed common limitations.3 In their claim construction briefs, Defendants never even suggested the possibility of different limitations for Rows 23, 19 and 28 based on their different claim language. But below, Defendants now take the new position that the differences in claim language among these rows (i.e., “ring oscillator variable speed system clock” versus “oscillator” or “variable speed clock”) has significance to the disputed common limitations. By belatedly relying on the differences in the claim language, Defendants now raise the possibility that each of the three terms has a different meaning. For that reason, the construction of all three is required, though Plaintiffs believe the differences in their claim language are not significant to the disputed common limitations and that the common arguments will be determinative for all three. Defendants are proposing below that Rows 23, 19 and 28 be left completely unconstrued, even as to the dispute concerning whether the claimed “entire” ring oscillator variable speed system clock/oscillator/variable speed clock “directly rel[ies] on a command input control signal or an external crystal/clock generator to generate a clock signal.”4 But rather than explain why Rows 19, 23 and 28 do not require any construction, Defendants’ position below includes claim construction arguments respecting Rows 19, 23 and 28 that are not found in their claim construction briefs. Ironically, Defendants’ new claim construction arguments merely highlight
the importance of construing Rows 19, 23 and 28 together, although this joint statement is not the place for Plaintiffs to respond to Defendants’ new arguments. Given the disputes apparent from both the table above and Defendants’ new arguments below, Defendants’ position appears intended to artificially curtail the Court’s consideration of the applicability of Defendants’ disclaimers to the USPTO on these parallel terms as proposed by 3 During meet-and-confer, Defendants proposed that Row 19, “an entire oscillator . . . ,” be construed, and Row 23 and 28 have constructions parallel to Row 19. Hence, at least during meet-and-confer, it appeared that there was no dispute that Rows 19, 23 and 28 should have parallel constructions with common limitations. 4 Defendants below say in a footnote that they “would be willing to stipulate” that Row 19 control the construction of Rows 23 and 28 as to these limitations only. Plaintiffs believe all of the limitations of these rows require construction. the Plaintiffs in their claim construction brief. Plaintiffs believe Rows 19, 23 and 28 need to be construed together in light of Defendants’ disclaimers to properly resolve the claim construction disputes on these claim phrases. The parties have agreed to drop a previously agreed-upon term “push down stack” since the longer phrase “push down stack connected to said ALU” is already agreed-upon for construction, although Defendants assert below that the term “push down stack” must also
unavoidably be construed as part of the longer phrase. Plaintiffs believe it is more important to construe the claimed connections between the push down stack and the ALU in the longer phrase (which the parties agree require construction) and the “ring oscillator”-related Rows 19, 23 and 28 rather than to construe the term “push down stack” separately. Including the case-dispositive Rows 19, 23 and 28, whose parallel constructions should not significantly increase the burden, the total number of terms for construction is 13.
Defendants’ Position: Defendants believe that construction of the ten terms set forth above is sufficient, and comports with the local rules limiting construction of claim terms to ten. Having already declined Plaintiffs’ invitation to stipulate that the construction of “ring oscillator” apply to “the entire oscillator . . .” and “variable speed clock,” Defendants do not agree that an additional three claim phrases (Rows 19, 23, and 28) should be construed in the spirit of “parallel” terms with undefined “common limitations.”5 Plaintiffs’ statement that Defendants ever indicated the construction of these terms would vary based on the different claim elements
is belied by the Defendants’ proposed constructions themselves, which are unique to each claim term, as shown above. Defendants’ proposed claim constructions for these terms have always recognized the distinction presented by the claim language,6 in addition to opposing Plaintiffs’ 5 Defendants offered to have the construction of Row 19 apply to Rows 23 and 28 for the limited issue of “[t]he main dispute in Row 19[, which] is whether an oscillator located entirely on the same semiconductor substrate as the CPU does not directly rely on a command input control signal, or merely does not rely on a control signal. Defendants would be willing to stipulate that the construction of Row 19 on this issue will apply to Row 28, as well as to Row 23.” Email from N. Joesten to K. Chen, Apr. 4, 2011 (emphasis added) (attached as Ex. A to Declaration of Nan E. Joesten). 6 The doctrine of claim differentiation dictates that different claims with different language have attempt to improperly limit all of these claims to having a clock that is non-controllable and variable based on the environment. Contrary to Plaintiffs’ assertion, Defendants never made a disclaimer during the reexamination proceedings related to “an entire ring oscillator variable speed system clock in said single integrated circuit.” Instead, Plaintiffs are fixating on the examiner’s summary of an
interview during the reexamination of U.S. Patent No. 6,598,148 (“the ‘148 patent”). However, the term at issue for construction, “an entire ring oscillator variable speed system clock in said single integrated circuit,” is not even in the claims of the ‘148 patent. Nevertheless, that Plaintiffs have only belatedly recognized the distinctions between various claim terms does not justify adding what is effectively five additional terms for
construction at this late date. Until April 21, Plaintiffs and Defendants had agreed on the construction of eleven terms, including “push down stack” as a stand alone term, and “push down stack connected to said ALU,” where the dispute at issue would be limited to the construction of “connected to . . . .” Defendants are willing to eliminate “push down stack” from the list of terms to be construed, but that change does not reduce the actual terms which the Court must construe, as “push down stack” remains within the term “push down stack connected to said ALU.” Furthermore, each of Rows 19, 23, and 28 contain not only the dispute as to the limitations relating to the claimed ring oscillator, oscillator, or variable speed system clock, but also whether the claimed “entire” variable speed clock “directly rel[ies] on a command input control signal or
an external crystal/clock generator to generate a clock signal.” Notably, Plaintiffs prefer to add additional terms for construction, rather than narrow the list to the most critical terms in dispute. different meaning, and should not be inferred to have the same construction because of some misguided notion of “parallel terms.”
Dated: April 28, 2011 K&L GATES LLP
By: /s/ Timothy P. Walker
Timothy P. Walker
Harold H. Davis
Attorneys for Plaintiffs
ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC.
COOLEY LLP
By: /s/ Kyle Chen
Kyle Chen
Attorneys for Plaintiffs
HTC CORP. and HTC AMERICA, INC.
BAKER & McKENZIE LLP
By: /s/ Edward K. Runyan
Edward K. Runyan
Daniel J. O’Connor
Tod L. Gamlen
Attorneys for Plaintiff BARCO N.V.
FARELLA BRAUN & MARTEL LLP
By:/s/ John L. Cooper
John L. Cooper
Attorneys for Defendants
TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED
KIRBY NOONAN LANCE & HOGE, LLP
By: /s/ Charles T. Hoge
Charles T. Hoge
Attorneys for Defendant
PATRIOT SCIENTIFIC CORPORATION

ATTESTATION

Pursuant to General Order No. 45, I represent that concurrence in the filing of this document has been obtained from each of the other signatories which shall serve in lieu of their signatures on this document.
/s/ ___Eugene Mar