Case3:12-cv-03880-VC Document111 Filed08/18/15 Page1 of 22

(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’ RESPONSIVE CLAIM CONSTRUCTION BRIEF

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.

GARMIN LTD., GARMIN INTERNATIONAL, INC., and GARMIN USA, INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs, v.

ZTE CORPORATION and ZTE (USA) INC.,

Defendants.

PLAINTIFFS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF i

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

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

TECHNOLOGY PROPERTIES LIMITED

LLC, et al.,

Plaintiffs, v.

SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS

AMERICA, INC.,
Defendants.

TECHNOLOGY PROPERTIES LIMITED

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

Case3:12-cv-03880-VC Document111 Filed08/18/15 Page2 of 22

LLC, et al.,

Plaintiffs,

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

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs, v.

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

Defendants.

v.

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

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

PLAINTIFFS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF ii

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

TABLE OF CONTENTS

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

ARGUMENT ...................................................................................................................... 1

1. Applicants did not make the disclaimers advanced by Defendants ........................ 1

   1. U.S. Patent No. 4,503,500 to Magar (“Magar”)..........................................2

   2. U.S. Patent No. 4,670,837 to Sheets (“Sheets”)..........................................9

2. The specification does not support Defendants’ disclaimer arguments ................ 11

3. The Claim Language Speaks for Itself .................................................................. 14

4. Defendants’ Construction is Not Consistent with Prior Constructions ................. 14

5. Plaintiffs’ Construction is Correct.........................................................................16

CONCLUSION ................................................................................................................. 16

PLAINTIFFS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF iii

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1. 2 Cases:

2. 3 Chicago Bd. Options Exch. Inc. v. Int’l Secs. Exch. LLC, 677 F3d 1361 (Fed. Cir. 2012) ..........13

3. 4 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)......................................................... 13-14

TABLE OF AUTHORITIES

PLAINTIFFS’ RESPONSIVE CLAIM
CONSTRUCTION BRIEF iv

1. 13 construction of “entire oscillator.” To the contrary, in distinguishing over the references cited by

2. 14 Defendants, applicants successfully demonstrated that the references at issue did not satisfy the

3. 15 claim limitations of (i) an on-chip oscillator1 (ii) whose frequency varied in the same way as the

4. 16 CPU as a function of processing variation, operating voltage, and temperature (“PVT factors”).2

5. 17 Specifically, the cited references (Magar and Sheets) disclosed either an off-chip crystal or an

6. 18 off-chip oscillator to generate the signal used to clock the CPU. Not only did these references

7. 19 fail to disclose an on-chip oscillator, but the references’ oscillators would not vary according to

8. 20 PVT factors in the same way as the CPU. Applicants’ arguments for distinguishing the claims at

9. 21 issue from Magar and Sheets were clearly based on limitations present in the claims themselves,

10. 22 1 For example, claim 6 recites “a [CPU] disposed upon an integrated circuit substrate...” and “an

I.

INTRODUCTION

The intrinsic record does not evidence any clear and unambiguous surrender of claim scope regarding the “entire oscillator” phrase. Defendants’ disclaimer position distorts statements made by applicants during prosecution and ignores the context in which they were made. As demonstrated herein, the prosecution history of the patent-in-suit merely reflects that applicants distinguished the claims at issue from the cited references on the basis of other claim limitations. Ultimately, Plaintiffs’ construction accurately reflects the true, bargained-for meaning of the “entire oscillator” phrase.

II.

ARGUMENT
A. Applicants did not make the disclaimers advanced by Defendants.

Applicants did not make the vague and broad disclaimers advanced by Defendants in their

same semiconductor substrate as the [CPU]....”

entire oscillator disposed upon said integrated substrate....” See Ex. S to Declaration of Barry J.

5,809,336, 2:15-20. The parties agree that the “entire oscillator” must be “located entirely on the

Bumgardner (hereinafter “Bumgardner Decl.”), Re-examination Certificate of U.S. Pat. No.

2 For example, claim 6 recites “thus varying the processing frequency of said first plurality of electronic devices and the clock rate of said second plurality of electronic devices in the same way as a function of parameter variation in one or more fabrication or operational parameters associated with said integrated circuit substrate, thereby enabling said processing frequency to track said clock rate in response to said parameter variation....” Ex. S at 2:23-30

1. 1 and no disclaimers were made. Without question, applicants never made any statements

2. 2 prohibiting the claimed on-chip oscillator that clocks the CPU from using an off-chip crystal as a

3. 3 reference signal, which is what Defendants seek to exclude by sleight of hand via their overly

4. 4 broad and vague claim construction.

1. U.S. Patent No. 4,503,500 to Magar (“Magar”).

In distinguishing the claims at issue from Magar, Defendants allege that applicants disclaimed any use of an “external crystal / clock generator” to (1) “cause clock signal oscillation” or (2) “control clock signal frequency.” This position, presented previously to this and other courts, is not supported by the intrinsic record. The record is clear that applicants distinguished Magar on the basis that Magar disclosed an external crystal used to generate the clock signal supplied to the CPU. Applicants further distinguished Magar on the basis that Magar’s external crystal would not vary according to PVT factors.

Figures 2 and 3 of Magar demonstrate that Magar utilizes an external crystal to generate a 20MHz clock signal. That clock signal, which has a period of 50 nanoseconds, drives the on- chip “CLOCK GEN” circuitry shown below in Figure 2 and diagramed in Figure 3. Bumgardner Decl. Ex. T, U.S. Pat. No. 4,503,500 to Magar at Figs. 2a, 3, 15:23-41.

1. 14 After receiving the 20MHz signal via pins X1 and X2, the “CLOCK GEN” circuitry in Magar

2. 15 divides the received signal from the crystal oscillator to create four quarter-cycle clocks seen in

3. 16 Q1-Q4. Ex. T at 15:23-35. These four, slower clock signals are each of a period of 200

4. 17 nanoseconds (a 5MHz clock signal). In Magar, there is no on-chip oscillator that generates these

5. 18 5MHz clock signals. Rather, the clock signal for the CPU is generated by the off-chip crystal.

6. 19 In distinguishing their claims from Magar, applicants relied on limitations that are

7. 20 expressly included in the patent claims themselves. Specifically, applicants argued that, unlike

8. 21 their inventions, the oscillator detailed in Magar was not on-chip. Additionally, applicants

9. 22 explained that Magar’s off-chip crystal and the speed of Magar’s CPU would not vary together

10. 23 according to PVT factors. See Bumgardner Decl. Ex. U, ’336 Patent, File History, Response to

11. 24 Office Action at 3-4 (July 7, 1997). As explained in applicants remarks, crystal oscillators do not

12. 25 vary (or vary minimally) due to PVT factors. Notably, both the on-chip/off-chip distinction and

13. 26 the PVT factor variability distinction relied upon by applicants are expressly present in the

14. 27 claims. Neither of these distinctions is directed to the meaning of the “entire oscillator”

15. 28 limitation.

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1. 1 In addition to the passages cited by Defendants – which when read properly show nothing

2. 2 more than applicants’ explanation between generating a clock signal by an on-chip, electronic

3. 3 oscillator (as in the ’336) and generating a clock signal by an off-chip crystal – applicants

4. 4 provided a clear, contextual meaning for their statements in the following passages:

In making the rejection based on Magar, the examiner appears to be confusing the multiple uses and meanings of the technical term “clock.” A clock is simply an electrical pulse relative to which events take place. Conventionally, a CPU is driven by a clock that is generated by [a] crystal. The crystal might be connected directly to two pins on the CPU, as in Magar, and be caused to oscillate by circuitry contained in the CPU with the aid of possible other external components . . .

The present invention is unique in that it applies, and can only apply, in the circumstance where the oscillator or variable speed clock is fabricated on the same substrate as the driven device . . .

12 Thus in this example, the user designs the ring oscillator (clock) to

frequency appropriate for the driven device when both the oscillator and the device are under specified fabrication and environmental parameters.

Id. at 4-5 (emphasis added). The critical difference explained by applicants in this passage is that the claimed oscillator used to generate clock signal is fabricated on the same chip as the CPU, and thus subject to the same PVT factors as the CPU. Nowhere in this explanation, or otherwise, do applicants state that the oscillator cannot utilize external reference signals (from fixed frequency sources or otherwise), such as in a PLL where an external crystal is used as a reference for the oscillator contained on the chip. This is consistent with Judge Grewal’s previous finding that the prosecution history of the patent did not “impose a prohibition on all types of control.” Bumgardner Decl. Ex. D, HTC Corp. v. Technology Properties Ltd., et al., No. 3:08-cv-882, Dkt. No. 509 at 10 (August 21, 2013 - Claim Construction Order) (the “Grewal Markman Order”).

After making the aforementioned argument to the examiner, the applicants again faced a rejection in light of Magar. Rather than abandon their previous arguments, applicants amended their claims to expressly require that the entire oscillator is present on the integrated circuit. This amendment clarifies the distinction that applicants were making over Magar, namely that circuitry sufficient to create a clock signal must be found on the same substrate as the CPU, thus

making it subject to the same PVT factors of variability (e.g., temperature). In explanation of

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1 their amendment, applicants wrote:

[T]he independent claims have been rewritten to specify that theentire ring oscillator variable speed system clock, variable speed clock or oscillator be provided in the integrated circuit, in order to sharpen the distinction over the prior art . . . [T]he prior art circuits require an external crystal . . .

Magar’s clock generator relies on an external crystal connected to terminals X1 and X2 to oscillate, as is conventional in microprocessor designs. It is not an entire oscillator in itself.

Bumgardner Decl. Ex. U, ’336 Patent, File History, Response to Office Action at 3 (February 10, 1998).

The applicants correctly observed that Magar “requires” an external crystal to oscillate and generate a clock signal. Id. at 4 (Magar “requires an external crystal”; Magar’s “clock gen” block “lacks the crystal or external generator that it requires”); id. at 5 (Magar “requires an external crystal or external frequency generator”). Notably, applicants pointed out that the oscillator of the claims at issue must be on-chip. Thus, the file history is clear that the applicants made a critical distinction between Magar (and similar references) and the ’336 invention: the oscillator that generates the CPU clock in Magar is an off-chip crystal, while the oscillator that generates the CPU clock in the ’336 invention is an on-chip, electronic oscillator. The file history never discussed – much less disclaimed – the use of PLL circuitry (including an off-chip reference crystal) to adjust the frequency of a clock signal that was already generated by an on- chip oscillator.

Notably, the distinctions over Magar relied upon by the applicants are found in the claims themselves. Claim 6 expressly requires the “entire oscillator disposed upon said integrated circuit substrate and connected to said [CPU].” The parties’ constructions are already in agreement that the “entire oscillator” is “located entirely on the same semiconductor substrate as the [CPU].” And claim 6 already requires PVT variability, reciting “varying the processing frequency of said first plurality of electronic devices and the clock rate of said second plurality of electronic devices in the same way as a function of parameter variation in one or more fabrication or operational parameters associated with said integrated semiconductor substrate....” The point is that the claims themselves already contain the distinctions relied upon by applicants in

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1. 1 distinguishing Magar. There is no factual (or legal) basis for inserting the vague and broad

2. 2 disclaimers advocated by Defendants in the “entire oscillator” construction.

3. 3 Defendants’ citations to the prosecution history distort the statements actually made by

4. 4 applicants with regard to Magar. Regarding the first and second cited passages from the

5. 5 prosecution history (found on pages 8 and 9 of Defendants’ Brief3), Defendants erroneously

6. 6 claim that “applicants expressly and unambiguously disclaimed oscillators that rely on an

7. 7 external crystal for frequency control.” Defts’ Brief at 9 (emphasis in original). This statement

8. 8 does not comport with what applicants actually said in the passages relied upon by Defendants.

9. 9 In the first passage cited by Defendants, applicants distinguished Magar on the basis that it used

10. 10 an external clock to drive the CPU:

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

Defts’ Brief at 8 (emphasis in Defts’ Brief). Nothing in this passage pertains to “frequency control,” whatever Defendants’ mean by this phrase. The clear distinction made by applicants is Magar’s lack of an on-chip oscillator.

In the second passage cited by Defendants, applicants again distinguish Magar on the basis of Magar’s use of an off-chip crystal:

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

manufacturing, operating voltage and temperature in the same way as the frequency capability of the microprocessor on the same underlying substrate, as claimed.

Defts’ Brief at 8-9 (emphasis in Defts’ Brief). The applicants’ statement that “the Magar microprocessor clock is frequency controlled by a crystal which is also external to the microprocessor” merely points out that, unlike the claims at issue, the signal used to clock the on- chip CPU in Magar is provided by an external crystal. The portions of applicants’ statements highlighted in Defendants’ brief are certainly not a clear and unequivocal disclaimer pertaining to any notion of “frequency control” and cannot be extended to support Defendants’ construction that the claimed oscillator does “not rely on a control signal or an external crystal clock to ... control clock signal frequency.” In fact, these passages say absolutely nothing about whether an on-chip oscillator (which clocks the on-chip CPU) could rely on an external crystal for “frequency control.” There is simply no “unmistakable” disavowal present in these passages.

Defendants next cite to portions of the prosecution history where applicants correctly distinguish their claims from the Magar on the basis that crystals are not subject to PVT factors, such as temperature:

[C]rystal oscillators have never, to Applicants’ knowledge, been fabricated on a single silicon substrate with a CPU, for instance.Even if they were, as previously mentioned, crystals are by design fixed-frequency devices whose oscillation frequency is designed to be tightly controlled and to vary minimally due to variations in manufacturing, operating voltage and temperature. The oscillation frequency of a crystal on the same substrate with the

20 microprocessor would inherently not vary due to variations in

Defts’ Brief at 9 (emphasis in Defts’ Brief). Defendants disingenuously misconstrue this passage as an “express disclaimer” that “the claims exclude oscillators using crystals to control frequency of the clock signal.” Id. This alleged sweeping disclaimer is found nowhere in the cited passage. It is simply not there. What is stated in this prosecution history is that a crystal clock’s frequency would not vary as a function of PVT like the “microprocessor on the same underlying substrate, as claimed.” And as set forth above, what is claimed is an “entire oscillator” whose frequency varies along with that of the CPU according to PVT factors.

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1. 1 In the next passage of prosecution history cited by Defendants, applicants again

2. 2 distinguish the claims’ on-chip electronic oscillator from Magar’s use of an external crystal.

3. 3 Defts’ Brief at 10. Applicants pointed out that, in their inventions, the signals are subject to

4. 4 variation due to PVT factors while in Magar the signals are “determined by the fixed frequency

5. 5 of the external clock.” Nothing in this passage remotely addresses the issue of whether the

6. 6 patent’s “entire oscillator” may utilize an external crystal as a reference signal. Nor could this

7. 7 passage legally support a sweeping disclaimer as to “control of the ‘frequency or rate’ of the

8. 8 clock.”

1. 9 In the final passage of Magar cited by Defendants, applicants again distinguish their

2. 10 invention from Magar on the basis of Magar’s use of an external crystal (i.e. lack of an on-chip

3. 11 oscillator), whose frequency is not subject to PVT factors:

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

Defts’ Brief, p. 10 (emphasis in Defendants’ Brief). Defendants cite this passage for the alleged disclaimer that the oscillator may not “rely on a control signal or an external crystal/clock generator to cause clock signal oscillation....” But this passage makes no such disclaimer, let alone one that is clear, unambiguous and unmistakable. Applicants are merely pointing out that Magar does not disclose an on-chip oscillator.

It is not entirely clear why Defendants seek to use the language “cause clock signal oscillation,” thereby deviating from this Court’s jury instruction that the claims exclude “any external clock used to generate a signal.” Plaintiffs strongly suspect that Defendants seek to replace “generate” with “cause clock signal oscillation” in order to lodge a non-infringement argument that goes beyond Judge Grewal’s prohibition and has nothing to do with the differences between the claims at issue and Magar. In any event, there is no basis for including a vague and broad disclaimer relating to “causing clock signal oscillation” because the prosecution history

1. 1 does not clearly and unmistakably include this prohibition. To the extent there is any disclaimer

2. 2 arising from Magar, Judge Grewal’s HTC jury instruction (as well as the express claim language

3. 3 itself) accurately addresses the scope of the invention.

2. U.S. Patent No. 4,670,837 to Sheets (“Sheets”).

Prior to facing a rejection under Magar, applicants faced a rejection based on Sheets. Like Magar, Sheets differed drastically from the claimed inventions of the ’336 patent. Sheets did not contain an on-chip oscillator, and it relied upon a technique for adjusting the frequency of a voltage control oscillator by writing a “digital word” from the microprocessor to the voltage control oscillator indicative of the desired operating frequency as a means of adjusting the clock frequency.

Applicants wrote:

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. . . Sheets’

15 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.

Bumgardner Decl. Ex. V, ’336 Patent, File History, Office Action Response at 8 (April 11, 1996).

In a subsequent amendment, the applicants noted that the Sheets clock “required” a “digital word” or “command input.” By contrast, in the ’336 inventions, “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.” Bumgardner Decl. Ex. W, ‘’336 Patent, File History, Office Action Response at 4 (Jan. 7, 1997). Thus, the applicants distinguished Sheets on at least two bases: (1) unlike the ’336 invention, Sheets lacked an on-chip clock/oscillator; and (2) the off-chip clock in Sheets required a “digital word”/“command input” to vary clock frequency (i.e. it did not vary according to PVT factors). These distinctions do not come close to constituting a disclaimer of any “control signal” for any purpose. Indeed, the analog voltage and/or current supplied to a ring oscillator in a PLL is nothing like the “digital

1. 1 command word” in Sheets. For example, while a ring oscillator may need power to oscillate (i.e.,

2. 2 analog voltage/current), it does not have the ability to accept a “digital command word” – nor

3. 3 could it be “required” to do so. Further, as discussed above, nothing said in overcoming the

4. 4 Magar reference prevents the use of external reference signals.

5. 5 The citations Defendants make to the prosecution history once again attempt to remove

6. 6 statements from the context under which they were made. The clear, contextual meaning of

7. 7 applicants’ statements is a narrow distinction over the cited reference, not broad disclaimer as

8. 8 alleged by Defendants. In the first passage cited by Defendants, applicants distinguished Sheets

9. 9 on the basis that Sheets discloses an external clock that would not vary according to PVT factors:

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.

Defts’ Brief at 12 (emphasis added by Plaintiffs). Unlike Sheets, the claims at issue contain an on-chip electronic oscillator that naturally varies according to PVT factors. Sheets, on the other hand, apparently varied frequency according to a “digital word”/“command input.” Remarkably, Defendants cite the above passage for the proposition that applicants clearly and unmistakably disclaimed all “reliance on control signals.” There is no such broad disclaimer present in this passage.

In the second passage cited by Defendants, applicants again distinguished Sheets on the basis that the Sheets clock does not vary according to PVT factors:

Even if the examiner is correct that the variable clock in Sheets is in the same circuit as the microprocessor of system 100, that still does not give the claimed subject matter. In Sheets, a command input is required to change the clock speed. In the present invention, the clock speed varies correspondingly to variations in operating parameters . . . No command input is necessary to change the clock frequency.

Defts’ Brief, pp. 12-13 (emphasis by Plaintiffs). Once again, applicants pointed out that Sheets does not disclose a clock (whether on-chip or off-chip) whose frequency varies according to PVT factors, a requirement of the claim. There is simply no broad disclaimer of all “reliance on control signals” present in this passage.

In the final passage cited by Defendants, applicants again distinguished Sheets on the basis of PVT variation, noting that the on-chip oscillator and on-chip CPU must both vary frequencies according to PVT factors:

Crucial to the present invention is that . . . when 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 varies in frequency but does not require manual or programmed inputs or external or extra components to do so.

Defts’ Brief at 13 (emphasis by Plaintiffs). Applicants noted that Sheets, on the other hand, required “manual or programmed inputs or external or extra components” to vary its oscillator. In this passage, there is no disclaimer of “reliance on control signals.” These words appear nowhere in this passage.

At the end of the day, all of Defendants’ accused products contain an on-chip, electronic oscillator that varies according to PVT factors. Defendants improperly seek to exclude the accused oscillators’ use of an external crystal as a reference signal by seeking a vague, broad, and improper disclaimer as to “reliance on control signals.” As set forth above, applicants’ response to Sheets does not make any such disclaimer, as applicants relied on express claim limitations (on-chip vs. off-chip, PVT factor variation) to distinguish the reference. It cannot be disputed that there is no unmistakable disclaimer of the on-chip, electronic oscillator using on an off-chip crystal oscillator as a reference signal in applicants’ response to Sheets. Applicants’ remarks regarding Sheets contain no such disclaimer.

B. The specification does not support Defendants’ disclaimer arguments.

Recognizing the weakness of their prosecution history arguments, Defendants next argue that “the specification disclaims the prior art’s fixed-speed clocks (which rely on a crystal, clock,

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1. 1 or signal to control the on-chip oscillator’s frequency)....” Defts’ Brief, p. 14. Defendants’

2. 2 specification-based disclaimer argument, however, is factually inaccurate and the case law cited

3. 3 by Defendants do not support a finding of disclaimer.

4. 4 First, Defendants misrepresent the specification by claiming that “the specification

5. 5 criticizes prior art solutions that clocked a CPU with a fixed clock, such as, for example, a clock

6. 6 whose frequency is controlled by an external crystal.” Id. at 13 (citing ’336 patent, 16:48-53 and

7. 7 17:12-23). This argument is highly misleading, as nowhere in the passages cited by Defendants

8. 8 does the specification discuss “a clock whose frequency is controlled by an external crystal.”

9. 9 The passages cited by Defendants merely make reference to a “traditional CPU design,” which as

10. 10 applicants pointed out in distinguishing Magar involves the use of an off-chip crystal to generate

11. 11 the actual clock signal for an on-chip CPU. The specification excerpts cited by Defendants do

12. 12 not discuss using an off-chip crystal to control an on-chip oscillator. Therefore, this passage

13. 13 cannot be read to support the sweeping disclaimer advocated by Defendants. Moreover, the fact

14. 14 that the patent was critical of using an off-chip crystal to generate the actual clock signal for the

15. 15 CPU is of no consequence to this claim construction proceeding as the claims themselves clearly

16. 16 exclude such a scenario from infringement (i.e., the “entire oscillator” must be “located entirely

17. 17 on the same semiconductor substrate as the [CPU]”).

18. 18 Second, Defendants make another misleading statement - “[r]ejecting the prior art fixed-

19. 19 speed clock approach (which is the approach used in the Defendants’ accused products), the

20. 20 ’336 patent discloses a variable-speed oscillator that is completely on the same semiconductor

21. 21 substrate as the CPU and whose speed freely varies with the PVT parameters of the substrate.”

22. 22 Defts’ Brief at 13-14 (emphasis by Plaintiffs). Contrary to this assertion, Defendants’ accused

23. 23 products employ a technique called “dynamic frequency scaling”, whereby the frequency of the

24. 24 clock signal generated by an on-chip oscillator and supplied to the CPU is increased during

25. 25 periods of high activity (so that the accused device can quickly respond to user inputs and be

26. 26 perceived as “high performance”), and decreased during periods of low activity (to conserve

27. 27 battery life and reduce power consumption). This oscillator is on the same semiconductor as the

28. 28 CPU and does vary with PVT. What Defendants hope to accomplish is to exclude the oscillators’

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1. 1 use of an external crystal as a reference signal. But, this situation is not addressed by the patent

2. 2 specification, much less disclaimed.

3. 3 Third, Defendants again overplay their hand by stating that “applicants chose to use a

4. 4 variable speed oscillator – which varies and is ‘determined by’ PVT parameters – rather than the

5. 5 prior art’s fixed speed clocks – which did not vary with the PVT parameters because their

6. 6 frequency was ‘fixed’ by an external crystal or control signal.” Id. at 14 (emphasis by

7. 7 Plaintiffs). Again, this statement is misleading as the prior art contemplated by the specification

8. 8 did not involve an on-chip oscillator “whose frequency was ‘fixed’ by an external crystal or

9. 9 control signal.” In the prior art contemplated by the patent, an off-chip crystal oscillator was the

10. 10 oscillator that clocked the CPU. Because using a crystal oscillator to “control” a different, on-

11. 11 chip oscillator was not discussed or contemplated by the specification, there can certainly be no

12. 12 disclaimer of this scenario.

13. 13 These erroneous statements by Defendants are not sufficient to meet the high bar required

14. 14 to show clear and unmistakable disclaimer, and the cases cited by Defendants involved far

15. 15 different factual scenarios. For example, in Chicago Bd. Options Exch. Inc. v. Int’l Secs. Exch.

16. 16 LLC, the court found that the specification “goes well beyond expressing the patentee’s

17. 17 preference” and that the patentee’s “repeated derogatory statements ... may be viewed as a

18. 18 disavowal of that subject matter from the scope of the Patent’s claims.” 677 F3d 1361, 1372

19. 19 (Fed. Cir. 2012). By contrast, the ’336 patent does not clearly and unambiguously criticize

20. 20 (much less “repeatedly criticize”) use of “a control signal or an external crystal/clock generator to

21. 21 cause clock signal oscillation or control clock signal frequency.” In fact, this situation is

22. 22 completely unaddressed in the passages cited by Defendants. And while the patent specification

23. 23 does distinguish the invention from prior art systems (like Magar) that used an external crystal to

24. 24 generate the signal used to clock the CPU, this type of system is specifically excluded by virtue

25. 25 of limitations already present in the claims (i.e., the on-chip and PVT variation limitations).

26. 26 Finally, Defendants claim that the title of the patent controls how the Court should

27. 27 interpret the patent. Yet Defendants cite to no law for this proposition. Indeed they cannot – “[i]t

28. 28 is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the

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1. 1 patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.

2. 2 2005) (en banc) (internal citations omitted). Here, the claims do not state that there can be no

3. 3 use of an external element such as an off-chip crystal as a reference for the clock. The claims

4. 4 only require that an entire oscillator be disposed on the same integrated circuit as the CPU and

5. 5 vary according to PVT factors. This is entirely consistent with the specification passages cited by

6. 6 Defendants, and there is no basis for finding disclaimer going beyond the limitations expressly

7. 7 present in the claims.

8. 8 C. The Claim Language Speaks for Itself

9. 9 Defendants next argue that the presence of other elements within the claim should dictate

10. 10 the meaning of the entire oscillator term. They argue that if an entire oscillator clocks a CPU at a

11. 11 clock rate which varies in the same way as a function of parameter variation in one or more

12. 12 fabrication or operation parameters associated with the integrated circuit substrate, it cannot use

13. 13 an external crystal or clock generator as a reference, because such reference would not permit the

14. 14 oscillator to vary.

15. 15 As an initial matter, the argument is technically incorrect. Even if an external crystal is

16. 16 used to later adjust the output of an oscillator, the fact is that the frequency output by the

17. 17 oscillator itself does vary as a function of parameter variation. The addition of other elements,

18. 18 such as an external crystal, to an infringing entire oscillator, does not change the fundamental

19. 19 nature of the oscillator itself.

20. 20 Further, the claim language speaks for itself. Whether an accused oscillator satisfies the

21. 21 “entire oscillator” element of the claim and also meets other claim limitations (such as the

22. 22 parameter variation requirements) is not an issue for claim construction, but instead a factual

23. 23 argument for trial. Importing the parameter variation requirements into the entire oscillator claim

24. 24 element is unnecessary, renders the parameter variation language redundant, and is not properly

25. 25 handled in the claim construction phase.

26. 26 D. Defendants’ Construction is Not Consistent with Prior Constructions

27. 27 As explained in Plaintiffs’ opening brief, adoption of the negative limitations proposed by

28. 28 Defendants would be a major departure from this Court’s prior treatment of the entire oscillator

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1. 1 phrase.

2. 2 In the HTC case, this Court issued a jury instruction that the entire oscillator “exclude any

3. 3 external clock used to generate a signal,” but declined to add a restriction with respect to control

4. 4 of the oscillator. The most notable difference between the HTC jury instruction and Defendants’

5. 5 proposed construction is that the HTC jury instruction restricted the entire oscillator from relying

6. 6 on an external crystal/clock generator to generate the signal used to clock the CPU, whereas

7. 7 Defendants seek to broaden that limitation by virtue of language that the external crystal/clock

8. 8 generator may not cause clock signal oscillation or control clock signal frequency.

9. 9 These departures from prior constructions are not trivial. First, Defendants, attempt to

10. 10 broaden the concept of generation to one of causation (“to cause clock signal oscillation”). As

11. 11 explained in their opening brief, Plaintiffs respectfully submit that the concept of “causation” can

12. 12 be viewed as significantly broader and much more uncertain than the concept of “generating” the

13. 13 actual signal used to clock the CPU. As set forth above, the intrinsic record does not support a

14. 14 disclaimer relating to “causation.” Indeed, the prosecution history indicates that if there was any

15. 15 disclaimer, it was the use of an external crystal to generate the actual signal used to clock the

16. 16 CPU (a situation that Plaintiffs respectfully submit is already excluded by the claim language).

17. 17 Notably, like the HTC jury instruction, both the Texas construction and the ITC construction also

18. 18 use the term “generate a [clock] signal.” Neither construction uses “cause clock signal

19. 19 oscillation.”

20. 20 Additionally, Defendants’ proposal that the entire oscillator cannot rely on an external

21. 21 clock to “control clock signal frequency” has been considered and rejected previously by this

22. 22 Court. Applicants did not make any clear and unmistakable disclaimer in this regard, and as such

23. 23 there is simply no basis for including this negative limitation in the entire oscillator construction.

24. 24 Doing so would improperly restrict the scope of the claims. Notably, neither the Texas

25. 25 construction nor the ITC construction includes a broad prohibition relating to “controlling clock

26. 26 signal frequency.”

E. Plaintiffs’ Construction is Correct

Defendants argue that Plaintiffs’ construction cannot be correct because it is too broad and covers prior art systems. They also contend that Plaintiffs surrendered claim scope when distinguishing over Magar and Sheets. These arguments lack merit.

First, Defendants’ argument that Plaintiffs’ “entire oscillator” construction covers prior art systems that allegedly disclosed an on-chip oscillator. Assuming arguendo that this is true, Defendants’ argument obviously ignores the many other claim limitations that must be considered when assessing the scope of the claim. It is simply nonsense to cherry pick the claim term at issue and argue that its construction must be narrower by viewing the claim term in a vacuum and divorced from the claim as a whole. Using Defendants’ logic, a construction of CPU would necessarily need to be narrower than what the parties agreed to because there were CPUs disclosed in the prior art. This approach makes little sense.

Second, Defendants’ argument that Plaintiffs’ construction cannot be correct because “the intrinsic evidence leaves no doubt that the applicants surrendered far more during prosecution to secure allowance of the ’336 patent” simply misstates what actually happened during prosecution. As set forth above, Magar and Sheets were distinguished based on the “on-chip” claim requirement and the PVT variation requirement, which are express limitations in the asserted claims.

Finally, it cannot be overlooked that Plaintiffs’ construction is included within Defendants’ construction. There is no dispute that it is correct. The only question is whether Defendants have met their heavy burden of disclaimer. As set forth above, they have not.

III. CONCLUSION

For the foregoing reasons, Plaintiffs respectfully request that the court adopt their proposed construction.

PLAINTIFFS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF 16

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

Dated: August 18, 2015 2Respectfully 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, 3870, 17 3876, 3877, 3880, 3881-VC (PSG)

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/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 August 18, 2015, I caused the foregoing document to be served on counsel of record via the Court’s CM/ECF system.

Dated: August 18, 2015

By:

/s/ Barry J. Bumgardner Barry J. Bumgardner

PLAINTIFFS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF

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CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)