The four patents-in-suit (the ‟336, ‟148, ‟749 and ‟890 patents) share the same specification and concern features of a commercially failed microprocessor called “Sh-Boom.” Plaintiffs‟ proposed constructions are all based on the intrinsic record provided by the specification and prosecution history. The patent owner‟s own words, through the specification and file histories of those patents, provide a clear picture of the true, narrow scope of the claims. When the patents were challenged in reexamination, TPL was forced to characterize and amend their claims even more narrowly to avoid prior art. TPL cannot now avoid its disclaimers, disavowals and characterizations of the alleged invention by simply ignoring them or by trying to run away from its own specification and file histories.

Rather than address the intrinsic record, TPL focuses on hearsay rhetoric regarding its Sh-Boom microprocessor. However, even the article that TPL relies upon describes Sh-Boom as “a bizarre processor” that was “never a commercial success.”1 Contrary to TPL‟s rhetoric, the intrinsic record shows that the patents-in-suit do not cover all microprocessors, but rather, only the “bizarre” features of Sh-Boom that were not implemented by the Plaintiffs.

II. DISPUTED TERMS

A. CPU Clock-Related Terms from the ’336, ’148, ’749 and ’890 Patents

Five of the “top ten” disputed terms relate to mechanisms for timing or “clocking” a central processing unit (“CPU”): (1) “ring oscillator,” (2) “providing an entire variable speed clock disposed upon said integrated circuit substrate,” (3) “clocking said central processing unit,” (4) “operates asynchronously to,” and (5) “as a function of parameter variation.” These closely-related terms will be discussed together in this brief. Although these terms appear most prevalently in the ‟336 and ‟148 patents, the term “ring oscillator” also appears in asserted claims of the ‟749 and ‟890 patents. Because the clock-related terms are related and potentially

1 http://spectrum.ieee.org/semiconductors/processors/25-microchips-that-shook-the-world/5

dispositive of claims in all four patents-in-suit, this brief will address them first.

i. The “variable speed” clock of the patents-in-suit

The CPU in a commercial microprocessor consists of millions of transistors that work together to interpret and execute instructions. To ensure that those millions of transistors work in harmony instead of chaos, a CPU typically relies on a series of timing signals known as “clock signals” to drive its operations. The clock signals, which are generated by a clocking device, are akin to “heartbeats” that drive blood through a human body. The clock signals control (and in fact equal) the speed at which the CPU operates.

To operate properly, a CPU‟s transistors must have enough time between clock signals to complete their operations before the next clock signal arrives. Accordingly, a CPU has a maximum speed that depends on how fast its transistors can operate. To ensure proper operation, the clocking device should never send clock signals “too fast” such that they exceed the CPU‟s maximum speed. See ‟336, 16:67-17:2 (“CPU 70 will always execute at the maximum frequency possible, but never too fast.”).2

Because the transistors in the CPU depend on electrical signals to operate, their maximum speed for proper operation is constrained by how fast the electrical signals can transmit through them, known as “transistor propagation delays.” According to the patents-in-suit, these delays depend on varying environmental conditions such as temperature, voltage and manufacturing process, which thus “determine” the CPU‟s maximum speed. ‟336, 16:47-50 and 59-60. For example, if the temperature in the environment rises, the CPU‟s maximum speed for proper operation decreases. ‟336, 16:59-67.

The patents-in-suit explain that, to avoid clocking the CPU at a rate faster than its maximum speed, prior art systems constrain the clock speed to a fixed rate slow enough to “operate properly in worse [sic] case conditions.” ‟336, 16:48-53. The patents criticize this approach by claiming that this constraint results in a CPU that operates at less than half of its theoretical maximum

2 All citations to “xx:yy-zz” refer to columns and lines in the referenced patent. As noted in the text, the patents-in-suit share a common specification. For purposes of consistency, this brief will cite to columns and lines in the ‟336 patent (Chen Decl., Ex. 1) when discussing the five clock-related terms.

performance. ‟336, 16:50-53.

The ‟336 and ‟148 patents are both entitled “High Performance Microprocessor Having Variable Speed System Clock” and disclose a variable speed clock comprised of transistors on the same integrated circuit as the CPU to provide higher performance when environmental conditions permit. By placing a variable speed clock on the same integrated circuit as the CPU, according to the patents-in-suit, the speed of the variable speed clock and the CPU‟s maximum speed will “vary together” in the same way according to changing environmental conditions. The result of this allegedly improved approach is that “CPU 70 will always execute at the maximum frequency possible, but never too fast.” ‟336, 16:67-17:2.

The only variable speed clock disclosed in the patents-in-suit is a clock generating circuit called a “ring oscillator” that is made of the same transistors on the same integrated circuit as those in the CPU itself. ‟336, 16:54-57. According to the patents-in-suit, because the ring oscillator and the CPU are on the same integrated circuit, they are subject to the same environmental conditions (temperature, voltage and process), resulting in the CPU “always” being clocked at its “maximum frequency possible, but never too fast” under any environmental conditions. ‟336, 16:54-17:10.

ii. Construction of “ring oscillator” (’336, ’148, ’749, ’890)

In the prior Texas action, Judge Ward construed “ring oscillator” as “an oscillator having a multiple, odd number of inversions arranged in a loop.” Chen Decl., Ex. 2 at 11. The parties‟ dispute turns primarily on whether the construction should incorporate statements made by TPL in subsequent reexamination concerning the claimed “ring oscillator”: Plaintiffs’ Construction TPL’s Construction

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

Plaintiffs‟ construction includes a “wherein” clause that incorporates explicit arguments and disavowals that TPL made during reexamination after Judge Ward‟s claim construction order and after the dismissal of the Texas action. Specifically, in order to overcome a rejection of its claims based on U.S. Patent No. 4,689,581 to Talbot (Chen Decl., Ex. 3), TPL argued that the voltage-

controlled oscillator (“VCO”) of Talbot did not teach the “ring oscillator” of the patents-in-suit. The examiner summarized TPL‟s arguments, which were made in an in-person interview, as follows:

Continuing, the patent owner further argued that the reference of Talbot does not teach of [sic] a “ring oscillator.” The patent owner discussed features of a ring oscillator, such as being non-controllable, and being variable based on the environment. The patent owner argued that these features distinguish over what Talbot teaches.

Interview Summary, 2/12/08, Control No. 90/008,227 (emphasis added) (Chen Decl., Ex. 4).

In light of TPL‟s disavowing arguments made to the PTO after Judge Ward‟s ruling, the construction must be adapted to require that the claimed “ring oscillator” be (1) “non-controllable,” and (2) “variable based on the environment.”3 Federal Circuit law is clear that “[a]rguments made during the prosecution of a patent application are given the same weight as claim amendments.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999). It is also black letter law that 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.” Microsoft Corp. v. Multi-Tech. Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004). “The purpose of consulting the prosecution history in construing a claim is to „exclude any interpretation that was disclaimed during prosecution.‟” Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citation omitted). “Accordingly, „where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender.‟” Id. (citation omitted); see also, e.g., Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (“Explicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations because „the public has a right to rely on such definitive statements made during prosecution.‟”)

3 Plaintiffs‟ construction requires that the oscillator be “(1) non-controllable; and (2) variable based on the temperature, voltage, and process parameters in the environment.” Part (2) of this construction is based on TPL‟s explanation of the term “environment” in its previous claim construction briefing. See Doc. No. 221 in Acer action (02/11/2011 TPL Claim Construction Brief), at 17:17-19 (“According to the „336 specification, „the ring oscillator frequency is determined by the parameters of temperature, voltage and process.‟ This is the only „environment‟ that is disclosed in the specification.”) (citation omitted).

(citation omitted).

The examiner‟s interview summary is a proper basis for finding a disavowal of claim scope. It expressly reflects what TPL, the patent owner, argued. The Federal Circuit has repeatedly relied upon patent owners‟ arguments recorded in interview summaries to find that patent owners disavowed claim scope to distinguish prior art. See, e.g., Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1322 (Fed. Cir. 2002) (disavowal found based on patent owner‟s arguments that the examiner recorded in interview summary); see also Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297, 1302-04 (Fed. Cir. 2001) (same); Trinity Indus. v. Road Sys., 121 F. Supp. 2d 1028, 1044 (E.D. Tex. 2000) (“It is proper to consider the interview summary in claim construction as it is part of the prosecution history.”) (citing Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1576 (Fed. Cir. 1996) (relying upon examiner‟s interview summary of patent owner‟s statements in claim construction)).

The examiner had no motive to misstate TPL‟s position, and TPL does not dispute the accuracy of any aspect of the examiner‟s summary of TPL‟s argument. In its opening brief, TPL cites its own self-serving amendment, written and filed after the examiner‟s summary, but tellingly that amendment did not dispute the examiner‟s summary of TPL‟s “ring oscillator” argument.

TPL‟s speculation that the examiner did not rely upon TPL‟s interview argument regarding the claimed “ring oscillator” is unsupported and immaterial. The Federal Circuit has held “on numerous occasions that patentee‟s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.” Microsoft Corp., 357 F.3d at 1350.

TPL argues that Salazar v. Procter & Gamble Co., 414 F.3d 1342 (Fed. Cir. 2005), applies, but it does not. Salazar held that “unilateral statements by an examiner” in a Notice of Allowance did not give rise to a disavowal by the patent owner. The statements at issue here were not “unilateral statements” by the examiner, but arguments made by TPL. The fact that the examiner recorded TPL‟s statements does not change the fact that it was TPL, not the examiner, who made them.

TPL also misapplies University of Pittsburgh v. Hedrick, 573 F.3d 1290 (Fed. Cir. 2009), which refused to give weight to a “terse” and ambiguous interview summary that was unclear

concerning which features of the claimed invention, if any, were being distinguished. Id. at 1297. In the present case, however, TPL clearly argued that the claimed ring oscillator “distinguish[es] over what Talbot teaches” because it has “features” such as “being non-controllable, and being variable based on the environment.” Interview Summary, 2/12/08, Control No. 90/008,227 (Chen Decl., Ex. 4). These disavowals clearly identify the claim language and the features on which it is distinguished.

Finally, there is no merit to TPL‟s suggestion that its disavowal is ineffective because it occurred in the reexamination of the ‟148 patent. The ‟148 patent shares the same specification and is directly related to the other three patents-in-suit, all of which claim a “ring oscillator.” The Federal Circuit has made clear that “[a]ny statement of the patentee in the prosecution of a related application as to the scope of the invention would be relevant to claim construction.” Microsoft Corp., 357 F.3d at 1350. Accordingly, TPL‟s arguments in the ‟148 reexamination are relevant to how common claim language should be interpreted in closely-related patents. TPL has not argued that “ring oscillator” should be construed differently in the ‟148 patent, nor would there be any basis for TPL to do so. In light of TPL‟s disavowing statements made to the PTO after Judge Ward‟s ruling, Plaintiffs‟ proposal should be adopted.

iii. “Non-controllable” and “variable based on the environment” is consistent with TPL’s description of the ring oscillator during the original prosecution.

TPL‟s reexamination disavowal as to the ring oscillator being “non-controllable” and “variable based on the environment” was essentially a shorthand summary of the numerous arguments the applicants made during the original prosecution of the ‟336 patent to overcome multiple prior art references. The original prosecution history underscores that the variable speed clock is non-controllable because its frequency variation is based on environmental parameters.

TPL distorts the specification to argue the claimed ring oscillator is “controllable via these [environmental] parameters” because “temperature, voltage and process are all controllable to one degree or another.” Opening Br. at 18 (quoting ‟336, 16:59-60). TPL is wrong. Nowhere does the patent or prosecution history suggest using the environmental parameters to somehow control the ring oscillator. Instead, as described by the patent and prosecution history, the claimed ring

oscillator naturally clocks the CPU at its maximum speed because they are comprised of the same transistors on the same integrated circuit and respond to uncontrollable variations in temperature, voltage and manufacturing process in the same way. See, e.g., ‟336 PH 04/15/1996 Amend. at 8 (emphasis added) (Chen Decl., Ex. 5 at HTCMSJ000025) (“the microprocessor and clock will naturally tend to vary commensurately in speed as a function of various parameters (e.g., temperature) affecting circuit performance”). No control of the ring oscillator is needed or permitted. Indeed, any control of the ring oscillator would defeat the purpose of the alleged invention by slowing the CPU from its maximum speed, as done in the prior art.

In the ‟336 prosecution history, TPL repeatedly drew the distinction between (a) deliberate “control” of the oscillator‟s frequency through an input signal, crystal or other component of the system and (b) the ability of the oscillator‟s frequency to vary based on the “environmental parameters” of temperature, voltage and process. For example, in response to rejections of claims reciting a “variable speed clock,” a “ring oscillator variable speed system clock” and an “oscillator,” TPL made the following argument:

A ring oscillator will oscillate at a frequency determined by its fabrication and design and the operating environment. Thus in this example, the user designs the ring oscillator (clock) to oscillate at a frequency appropriate for the driven device when both the oscillator and the device are under specified fabrication and environmental parameters. Crucial to the present invention is that since both the oscillator or variable speed clock and driven device are on the same substrate, when the fabrication and environmental parameters vary, the oscillation or clock frequency and the frequency capability of the driven device will automatically vary together. This differs from all cited references in that the oscillator or variable speed clock and the driven device are on the same substrate, and that the oscillator or variable speed clock varies in frequency but does not require manual or programmed inputs or external or extra components to do so.

‟336 PH Amend. 07/07/1997 at 5 (Chen Decl., Ex. 5 at HTCMSJ000014) (emphasis added).

The patent owner continued to draw this “crucial” distinction between the prior art‟s concept of “control” (e.g., based on manual or programmed inputs or external components) and the environmental factors discussed in the patent. For example, the patent owner contrasted the “frequency controlled” clock in U.S. Patent No. 4,503,500 (“Magar”) with the claimed “variable speed clock,” “ring oscillator variable speed system clock” and “oscillator” as follows:

[O]ne of ordinary skill in the art should readily recognize that the speed of the cpu and

the clock do not vary together due to manufacturing variation, operating voltage and temperature of the IC in the Magar microprocessor . . . This is simply because the Magar microprocessor clock is frequency controlled by a crystal which is also external to the microprocessor. Crystals are by design fixed-frequency devices whose oscillation speed is designed to be tightly controlled and to vary minimally due to variations in manufacturing, operating voltage and temperature. The Magar microprocessor in no way contemplates a variable speed clock as claimed.

See id. at 3-4 (Chen Decl., Ex. 5 at HTCMSJ000012-13) (italics in original; boldface and underlining added). The patent owner further argued:

[C]rystals 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. The oscillation frequency of a crystal on the same substrate with the microprocessor would inherently not vary due to variations in manufacturing, operating voltage and temperature in the same way as the frequency capability of the microprocessor on the same underlying substrate, as claimed.

See id. at 4 (Chen Decl., Ex. 5 at HTCMSJ000013) (emphasis added).

In another example, the patent owner distinguished the “frequency control information” and “clock control signals” in U.S. Patent No. 4,670,837 (“Sheets”) from the claimed variable speed clocking mechanisms:

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.

‟336 PH 04/15/1996 Amend. at 8 (Chen Decl., Ex. 5 at HTCMSJ000025) (emphasis added).

Specifically, the patent owner pointed out that the claimed oscillator will “naturally tend to vary commensurately in speed as a function of various parameters (e.g., temperature) affecting circuit performance.” Id. (emphasis added). Later, the patentee went even further to distinguish Sheets‟ clock “in the same integrated circuit” controlled by a “command input” as follows:

Even if the Examiner is correct that the variable clock in Sheets is in the same integrated 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 correspondingly to variations in operating

parameters of the electronic devices of the microprocessor because both the variable speed clock and the microprocessor are fabricated together in the same integrated circuit. No command input is necessary to change the clock frequency.

‟336 PH 01/03/1997 Amend. at 4 ( Chen Decl., Ex. 5 at HTCMSJ000016) (emphasis added).

As the preceding discussion shows, the patent owners consistently characterized the claimed “variable speed clock,” “ring oscillator variable system clock” and “oscillator” as environmentally dependent, and expressly distinguished prior art clocks that were “controlled,” whether through “clock control signals,” “frequency control information,” or “command inputs.” It should therefore come as no surprise that, during reexamination, TPL again emphasized the “features of a ring oscillator, such as being non-controllable, and being variable based on the environment” as distinguishing the claims over the prior art. Interview Summary, 2/12/08, Control No. 90/008,227 (Chen Decl., Ex. 4).

iv. Plaintiffs’ construction of the other clock-related terms should be adopted.

The term “providing an entire variable speed clock disposed upon said integrated circuit substrate” should be construed together with the other two “ring oscillator” related terms: “an entire ring oscillator variable speed system clock in said single integrated circuit” and “an entire oscillator disposed upon said integrated circuit substrate.” Although the ‟336 patent language uses three different terms to claim the variable speed clock in the claims (i.e., “variable speed clock,” “ring oscillator variable speed system clock” and “oscillator,”) each side has proposed parallel constructions for each term with common limitations, as shown below: Term Plaintiffs’ Construction TPL’s Construction

providing an entire variable speed clock disposed upon said integrated circuit substrate

Providing a variable speed clock

that is located entirely on the same semiconductor substrate as the CPU and does not rely on a 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

Term Plaintiffs’ Construction TPL’s Construction

an entire ring oscillator variable speed system clock in said single integrated circuit

A ring oscillator variable speed system clock

that is located entirely on the same semiconductor substrate as the CPU and does not rely on a control signal or an external crystal/clock generator to generate a clock signal,

wherein the ring oscillator variable speed system clock is: (1) non-controllable; 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

An oscillator

that is located entirely on the same semiconductor substrate as the CPU and does not rely on a 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

The parties appear to agree that these three terms present common issues notwithstanding differences in terminology. Both sides have treated the three terms in parallel fashion, reflecting that they are supported by the same “ring oscillator” disclosure in the specification. See Nystrom v. Trex Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005) (“Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.”).

The disputes regarding these terms fall into two categories. First, for the reasons explained above, these terms should incorporate the requirement that the clock be “(1) non-controllable; and (2) variable based on the temperature, voltage, and process parameters in the environment,” based on the patent owner‟s explicit arguments during prosecution and reexamination.

The remaining dispute turns on whether the claimed variable speed clock “does not rely on a control signal” (Plaintiffs‟ proposal) or whether the signal must be a specific “command input

control signal” that is “directly” relied upon, as TPL proposes. Plaintiffs‟ construction incorporates TPL‟s arguments that the variable speed clock must be “non-controllable.” Logically, a “non-controllable” clock cannot rely in any way – directly, indirectly, or otherwise – on any “control signal,” whether it is based upon “clock control signals,” “frequency control information,” or “command inputs,” which was disclaimed during the ‟336 prosecution. Indeed, the specification discloses no “control signal” for the claimed clocking mechanisms, and inclusion of the word “directly” has no support in the intrinsic record. Plaintiffs‟ proposed language, which does not include “directly” or “command input,” should therefore be adopted.

TPL‟s proposal also improperly attempts to recapture subject matter it surrendered when it distinguished the Talbot reference. TPL now contends that a clocking circuit known as a “phase locked loop” (“PLL”) infringes the “non-controllable” clocking mechanisms, despite the fact that TPL previously argued that its claims do not cover such an arrangement in order to overcome the Talbot reference. See generally HTC‟s Motion for Summary Judgment of Non-Infringement (Doc. No. 293 in HTC action). Talbot discloses a phase-locked loop (PLL), as confirmed by its title: “Integrated Circuit Phase Locked Looped Timing Apparatus.” The PLL that TPL attempted to distinguish is shown in Figure 1 of Talbot reproduced below (the PLL is numbered as 4):

A phase-locked loop provides a clock whose output frequency is controlled by locking the phase of the output clock signal to the phase of the input clock signal provided by an external crystal clock. For example, if the frequency of the crystal clock relied upon by a phase-locked loop is 10

MHz (10 million cycles per second), the phase-locked loop can multiply the crystal frequency by 2 or 3 to provide clock signal frequencies at 20 MHz or 30 MHz, respectively.

As noted above, TPL argued that the claimed ring oscillator was “non-controllable” and “variable based on the environment,” and was distinguishable from Talbot. The particular oscillator in Talbot was a “voltage-controlled oscillator,” shown as “VCO” in Figure 1 above (item 12). See Amendment, 2/26/08 at 11 (Chen Decl., Ex. 6) and Interview Summary, 2/12/08, Control No. 90/008,227 (Chen Decl., Ex. 4). The frequency of Talbot‟s voltage-controlled oscillator 12 is “controlled” by a “control signal” based upon the external clock signal (item 3). See Talbot at 2:58-63, 3:7-16, 3:26-36 (Chen Decl., Ex. 3) (“[A] convertor and filter circuit 11 . . . is arranged to convert the output pulses from the comparator 7 into a voltage signal for controlling the frequency of oscillation of a voltage controlled oscillator circuit 12.”) (emphasis added). Talbot‟s voltage-controlled oscillator, therefore, relies on a control signal and an external crystal/clock generator to generate its clock signal. See id.

TPL‟s clear disclaimer of Talbot‟s voltage-controlled oscillator confirms that the claimed clocking mechanisms do not include a clock that relies on a control signal (voltage, current or otherwise) or external crystal clock generator. In fact, absent its reliance on the control signal and external clock, Talbot‟s voltage-controlled oscillator 12 is structurally no different than an “oscillator having a multiple, odd number of inversions arranged in a loop,” which is how TPL proposes to construe the term “ring oscillator.” See Wolfe Decl. in support of Plaintiffs‟ Sur-Reply (Doc. No. 266 in Acer action).4

As noted, TPL now seeks to accuse the same type of voltage-controlled clocks it had to disclaim during prosecution and reexamination. See Chen Ex. 7. It would be improper to permit this. See Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1340 (Fed. Cir. 1998) (“Post-hoc, litigation-inspired argument cannot be used to reclaim subject matter that the public record in the PTO clearly shows has been abandoned.”). Because the claimed clocking mechanisms are non-controllable and cannot rely on any signal, directly or otherwise, the words “directly” and

4 Judge Fogel permitted the filing of the Wolfe Declaration during the prior briefing to rebut TPL‟s incorrect factual assertion that Talbot did not disclose an odd number of inversions in a loop.

“command input” should be removed from Judge Ward‟s construction, and Plaintiffs‟ proposals should be adopted in their entirety.

v. Construction of “clocking said CPU” (’336 patent)

The disputed phrase, “clocking said CPU,” is in all asserted claims of the ‟336 patent. The dispute is whether the claimed variable speed clock will time the operation of the CPU at its maximum frequency as disclosed by the specification: Plaintiffs’ Construction [JCCS 20] TPL’s Construction Timing the operation of the CPU such that it will always execute at the maximum frequency possible, but never too fast Timing the operation of the CPU

Plaintiffs‟ construction of “clocking said CPU” states that the CPU “will always execute at the maximum frequency possible, but never too fast,” that is based directly on the clear statements in the specification and prosecution history. As noted above, the specification criticizes prior art approaches resulting in a CPU that operates at less than half of its theoretical maximum performance. ‟336, 16:50-53. The specification instead asserts that the alleged invention, “[b]y deriving system timing from the ring oscillator 430, CPU 70 will always execute at the maximum frequency possible, but never too fast.” ‟336, 16:59-17:2 (emphasis added).

TPL argues that Plaintiffs‟ construction attempts to import limitations from the specification. TPL is wrong. This patent is not entitled to claims broader than the sole embodiment in the specification. When the embodiment “is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed. Cir. 2009) (citation omitted). Moreover, “[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. at 1329 (citation omitted). And finally, when the specification “describes a feature of the invention ... and criticizes other products ... that lack that same feature, this operates as a clear disavowal of these other products....” Id. at 1333.

All of these principles apply here because the specification emphatically declares that the

CPU of the alleged invention “always” executes at the maximum frequency and criticizes products that lack that feature. The patent owner also relied on this feature to distinguish the Sheets reference during prosecution of the ‟336 patent, arguing that “CPU 70 executes at the fastest speed possible using the adaptive ring counter clock 430.” Amendment, 4/15/96 at 8-9 (Chen Decl., Ex. 8). The term “clocking said CPU” should therefore be construed to require “timing the operation of the CPU such that it will always execute at its maximum frequency possible, but never too fast.”

vi. Construction of “operates asynchronously to” (’336)

The phrase “operates asynchronously to” appears at the end of claims 11, 13 and 16 and is part of the longer phrase: “wherein said central processing unit operates asynchronously to said input/output interface.” The dispute is whether operating “asynchronously” excludes synchronous operation using independent clocks: Plaintiffs’ Construction [JCCS 29] TPL’s Construction operates without a timing relationship to/with timed by independent clock signals

As discussed above, the patent discloses a variable speed ring oscillator that clocks the CPU at its maximum frequency possible while varying its frequency based on the environmental conditions. However, for the CPU to communicate with outside components, “[t]he external world must be synchronized to the microprocessor 50 for operations such as video display updating and disc drive reading and writing.” ‟336, 17:23-25. To synchronize the microprocessor with the external world, a second, fixed speed clock for timing the I/O interface is provided. “This synchronization is performed by the I/O interface 432, speed of which is controlled by a conventional crystal clock 434.” ‟336, 17:25-27. The specification explains that this “dual clock scheme” has the additional advantage of not dragging down the CPU‟s speed with the typically slower I/O interface. ‟336, 17:12-21.

To allow the CPU to always execute at the maximum frequency possible and not be dragged down by the speed of the I/O interface, the CPU must operate “asynchronously,” i.e., without a timing relationship with, the I/O interface. Indeed, it is logically impossible for the CPU‟s environmentally dependent “variable speed clock” to have any timing relationship with the I/O

interface‟s fixed frequency clock.

TPL‟s proposed construction, “timed by independent clock signals,” is contrary to the plain meaning of “asynchronous” because “independent” clock signals can nevertheless have a timing relationship with one other – in other words, be “synchronized.” Anything that is synchronized, by definition, is not “asynchronous.” A simple example of “independent” yet synchronized clocks comes from old war movies in which soldiers synchronize their “independent” wrist watches. During reexamination, TPL actually dedicated an entire section entitled “Synchronism Does Not Preclude Independence” to distinguish the Kato prior art by arguing that “independent” clocks may nonetheless be synchronous. See Amendment, 9/8/08, pp. 21-22 of 28 (Chen Decl., Ex. 9). TPL‟s argument that two “independent” clocks can nonetheless operate “synchronously” fatally undermines its current litigation position on the meaning of “asynchronously.” TPL‟s proposed construction, as admitted by TPL, improperly includes both asynchronous and synchronous operations, contrary to the plain claim language.

TPL‟s definition is derived entirely from an excerpt of an extrinsic reference, Computation Structures, that TPL submitted to the PTO in the reexamination. See Opening Br. at 12. TPL‟s reliance on this textbook is problematic. Because the excerpt was submitted to the PTO during this litigation, perhaps in anticipation of claim construction, it should be given little weight. See Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed. Cir. 1986) (observing that documents submitted to PTO during litigation “might very well contain merely self-serving statements which likely would be accorded no more weight than testimony of an interested witness or argument of counsel.”). TPL‟s reliance on its own submission also improperly attempts to use the prosecution history to broaden the scope of its claims. See, e.g., Dow Chem. Co. v. NOVA Chems. Corp. (Can.), 629 F. Supp. 2d 397, 415 (D. Del. 2009) (“[Plaintiff] does not cite any authority, and the Court is not aware of any, suggesting that the prosecution history can be used to broaden the scope of claims beyond that which is supported by the specification.”).

A more relevant portion of that textbook, which TPL failed to submit to the PTO or this Court, shows that by “independent clocks,” the textbook actually describes separate clocks with no timing relationship. In a section entitled “Multiple-Clock Systems,” the book describes a situation

involving “multiple asynchronous clocks, each clock a free-running oscillator generating [clock signals] independently of the others.” Chen Decl., Ex. 10 at 175 (emphasis added). The book goes on to explain: “This relationship is common among large, independently designed subsystems; as an extreme example, the interconnection of two separate computers (each of which may run synchronously with its single clock) constitutes a system with at least two unsynchronized clocks.” Id. Two separate computers, which might have been powered on at different times and may be separated by great distances, present a clear example of two things that operate without a timing relationship with each other, or in other words, asynchronously. This passage clarifies that when Computation Structures uses the term “independent” in the context of asynchronous operations, it is referring to the lack of a timing relationship.

vii. Construction of “as a function of parameter variation” (’336/’148)

The ‟336 and ‟148 patents require that the CPU‟s maximum speed for proper operations and the “oscillator” vary in the same way “as a function of parameter variation” in fabrication or operational parameters. The two sides‟ competing proposals are below: Plaintiffs’ Construction TPL’s Construction in a determined functional relationship with parameter variation based on parameter variation

The specification explains that the temperature, voltage and process parameters in the environment “determine” the CPU‟s and the oscillator‟s frequencies in a “functional relationship:”

The ring oscillator[‟s] 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. The ring oscillator 430 is useful as a system clock, . . . because its performance tracks the parameters which similarly affect all other transistors on the same silicon die.

‟336, 16:59-67 (emphasis added). By disclosing that the ring oscillator‟s frequency is “determined by” the environmental parameters and claiming that the CPU‟s processing frequency is a “function” of the parameters‟ variation, the claims require that the frequency of the CPU and the on-chip oscillator have a specific and unique value for any given combination of temperature, voltage and process. Put another way, for a given combination of temperature, voltage and process parameters, the CPU‟s and the on-chip oscillator‟s frequencies should be reproducible. The

numerical example provided by the specification in fact suggests such a determined functional relationship. ‟336, 16:60-63 (“At room temperature, the frequency will be in the neighborhood of 100 MHZ. At 70 degrees Centigrade, the speed will be 50 MHZ.”). Plaintiffs‟ proposed construction captures this requirement of a “determined” value. Plaintiffs‟ construction is also consistent with and interpretive of the example in the specification discussed above.

TPL‟s proposed construction is too vague and claims, as environmental parameters vary, non-reproducible, even random (i.e., undetermined) CPU and oscillator frequencies for a given combination of temperature, voltage and process. Thus, TPL‟s proposal should be rejected.