LG Electronics, Inc. v. Bizcom Electronics, Inc. , 453 F.3d 1364 ( 2006 )

United States Court of Appeals for the Federal Circuit
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LG ELECTRONICS, INC.,
Plaintiff-Appellant,
v.
BIZCOM ELECTRONICS, INC.,
COMPAL ELECTRONICS, INC., and SCEPTRE TECHNOLOGIES, INC.,
Defendants-Cross Appellants,
and
EVEREX SYSTEMS, INC.,
Defendant-Appellee,
and
FIRST INTERNATIONAL COMPUTER INC.
and FIRST INTERNATIONAL COMPUTER OF AMERICA, INC.,
Defendants-Cross Appellants,
and
Q-LITY COMPUTER, INC., QUANTA COMPUTER, INC.,
and QUANTA COMPUTER USA, INC.,
Defendants-Cross Appellants.
Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for plaintiff-
appellant. On the brief was Michael J. Schaengold, Patton Boggs LLP, of Washington,
DC.
William J. Anthony, Jr., Orrick, Herrington & Sutcliffe LLP, of Menlo Park,
California, argued for defendants-cross appellants Bizcom Electronics, Inc., et al. With
him on the brief were Eric L. Wesenberg, Kaiwen Tseng, Matthew J. Hult and Rowena Y.
Young.
2
Joseph L. Strabala, Law offices of Joseph L. Strabala, of San Francisco, California
for defendant-appellee Everex Systems, Inc., joined in the co-defendants’ briefs.
Ronald S. Lemieux, Paul, Hastings, Janofsky & Walker LLP, of Palo Alto,
California for defendants-cross appellants First International Computer, Inc., et al. Of
counsel on the brief was James M. Smith, Squire, Sanders & Dempsey L.L.P., of Palo
Alto, California.
Terry D. Garnett, Paul, Hastings, Janofsky & Walker LLP, of Los Angeles,
California for defendants-cross appellants Q-Lity Computer, Inc., et al. With him on the
brief were Vinent K. Yip, Maxwell A. Fox, Peter J. Wied, Sang N. Dang and Jay C. Chiu.
Of counsel was Jeffrey D. Mills, Fulbright & Jaworski L.L.P., of Austin, Texas.
Joel E. Lutzker, Schulte Roth & Zabel LLP, of New York, New York, for amicus
curiae Minebea Co., Ltd. With him on the brief were David H. Kagan and Richard Chern.
Steven E. Feldman, Welsh & Katz, Ltd., of Chicago, Illinois, for amicus curiae
Papst Licensing GmbH & Co. KG.
Appealed from: United States District Court for the Northern District of California
Judge Claudia Wilken
United States Court of Appeals for the Federal Circuit
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LG ELECTRONICS, INC.,
Plaintiff-Appellant,
v.
BIZCOM ELECTRONICS, INC.,
COMPAL ELECTRONICS, INC., and SCEPTRE TECHNOLOGIES, INC.,
Defendants-Cross Appellants,
and
EVEREX SYSTEMS, INC.,
Defendant-Appellee,
and
FIRST INTERNATIONAL COMPUTER INC.
and FIRST INTERNATIONAL COMPUTER OF AMERICA, INC.,
Defendants-Cross Appellants,
and
Q-LITY COMPUTER, INC., QUANTA COMPUTER, INC.,
and QUANTA COMPUTER USA, INC.,
Defendants-Cross Appellants.
__________________________
DECIDED: July 7, 2006
__________________________
Before MICHEL, Chief Judge, NEWMAN, and MAYER, Circuit Judges.
MAYER, Circuit Judge.
LG Electronics, Inc. (“LGE”) appeals from the final judgment of the United States
District Court for the Northern District of California, which granted summary judgment of
noninfringement of U.S. Patent Nos. 4,918,645; 5,077,733; 4,939,641; 5,379,379; and
5,892,509 in favor of Bizcom Electronics, Inc.; Compal Electronics, Inc.; Sceptre
Technologies, Inc.; First International Computer, Inc.; First International Computer of
America, Inc.; Q-Lity Computer, Inc.; Quanta Computer, Inc.; Quanta Computer USA,
Inc.; and Everex Systems, Inc. (collectively “defendants”). LG Elecs., Inc. v. Ausustek
Computer, Inc., Nos. C-01-1375, -1552, -1594, -2187 (N.D. Cal. Jan. 31, 2005); LG
Elecs., Inc. v. Ausustek Computer, Inc., Nos. C-01-1375, -1594, -2187, -1552 (N.D. Cal.
Nov. 30, 2004); LG Elecs., Inc. v. Ausustek Computer, Inc., 248 F. Supp. 2d 912 (N.D.
Cal. 2003); LG Elecs., Inc. v. Ausustek Computer, Inc., Nos. C-01-326, -1375, -1594,
- 2187, -1552 (N.D. Cal. Aug. 20, 2002) (“Intel I”). LGE also appeals and defendants
cross appeal various claim construction rulings by the trial court. LG Elecs., Inc. v.
Ausustek Computer, Inc., Nos. C-01-00326, -01375, -01594, -02187, -01552 (N.D. Cal.
Aug. 20, 2002) (“Claim Construction Order”). Defendants First International Computer,
Inc.; First International Computer of America, Inc.; Q-Lity Computer, Inc.; Quanta
Computer, Inc.; and Quanta Computer USA, Inc. also cross appeal the denial of
summary judgment based on their implied license defense. LG Elecs., Inc., 248 F.
Supp. 2d 912.
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Background
LGE is the owner of patents relating to personal computers, including U.S.
Patents Nos. 4,918,645 (disclosing systems and methods that increase the bandwidth
efficiency of a computer’s system bus); 5,077,733 (claiming, in relevant part, a method
that controls the access of a device to a bus shared by multiple devices); 4,939,641
(claiming, in relevant part, a system for ensuring that outdated data is not retrieved from
memory); 5,379,379 (claiming a system and method for ensuring that outdated data is
not retrieved from memory); and 5,892,509 (claiming networked computers capable of
sharing certain video images). LGE sued defendants alleging infringement of these
patents.
Defendants purchase microprocessors and chipsets from Intel or its authorized
distributors and install them in computers. Intel is authorized to sell these products to
defendants under an agreement with LGE. However, pursuant to this agreement, Intel
notified defendants that, although it was licensed to sell the products to them, they were
not authorized under that agreement to combine the products with non-Intel products.
LGE brought suit against defendants, asserting that the combination of microprocessors
or chipsets with other computer components infringes LGE’s patents covering those
combinations. LGE did not assert patent rights in the microprocessors or chipsets
themselves.
After construing the patent claims, the trial court granted summary judgment of
noninfringement of each patent. It determined that there was no implied license to any
defendant, but that, with the exception of the ’509 patent, LGE’s rights in any system
claims were exhausted. The court also found that LGE was contractually barred from
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asserting infringement of the ’509 patent against defendants. It found the ’645, ’733,
and ’379 patents not infringed after applying its claim construction to the accused
methods and devices. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
Discussion
“We review the trial court's grant of summary judgment without deference,
reapplying the same standard as the trial court.” Lacavera v. Dudas, 441 F.3d 1380(Fed. Cir. 2006) (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed.
Cir. 2005)). Summary judgment is appropriate “if the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show that
there is no genuine issue as to any material fact and that the moving party is entitled to
a judgment as a matter of law.” Fed. R. Civ. P. 56(c). We review claim construction de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).
I. Implied License1
“In a suit for patent infringement, the burden of proving the establishment of an
implied license falls upon the defendant.” Bandag, Inc. v. Al Bolser's Tire Stores, Inc.,
750 F.2d 903, 924 (Fed. Cir. 1984) (citing Bassick Mfg. Co. v. Adams Grease Gun
Corp., 54 F.2d 285, 286 (2d Cir. 1931)). To prevail, defendants were required to
establish that the products have no noninfringing uses and that “the circumstances of
the sale . . . ‘plainly indicate that the grant of a license should be inferred.’” Met-Coil
1
First International Computer, Inc.; First International Computer of America,
Inc.; Q-Lity Computer, Inc.; Quanta Computer, Inc.; and Quanta Computer USA,
Inc. are the defendants challenging the trial court’s implied license ruling.
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Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 686 (Fed. Cir. 1986) (quoting
Bandag, Inc., 750 F.2d at 925). The trial court found, and we agree, that Intel’s sales of
its licensed products to defendants do not warrant the inference of a license with
respect to the asserted patents. Regardless of any noninfringing uses, Intel expressly
informed them that Intel’s license agreement with LGE did not extend to any of
defendants’ products made by combining an Intel product with non-Intel products. In
light of this express disclaimer, no license can be implied.
II. Patent Exhaustion
The patents asserted by LGE do not cover the products licensed to or sold by
Intel; they cover those products when combined with additional components. The trial
court, nevertheless, found that the system claims in all patents except the ’509 patent
were exhausted, but that the exhaustion doctrine did not apply to the method claims.
We reverse the trial court’s holding with respect to the system claims and affirm with
respect to the method claims.
It is axiomatic that the patent exhaustion doctrine, commonly referred to as the
first sale doctrine, is triggered by an unconditional sale. See Mitchell v. Hawley, 83 U.S.
544, 547 (1873). “[A]n unconditional sale of a patented device exhausts the patentee's
right to control the purchaser’s use of the device thereafter. The theory behind this rule
is that in such a transaction, the patentee has bargained for, and received, an amount
equal to the full value of the goods. This exhaustion doctrine, however, does not apply
to an expressly conditional sale or license. In such a transaction, it is more reasonable
to infer that the parties negotiated a price that reflects only the value of the ‘use’ rights
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conferred by the patentee.” B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1426
(Fed. Cir. 1997) (discussing Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 708 (Fed.
Cir. 1992)) (emphasis added and citations omitted).
There are two sales at issue here. First, prior to this litigation, LGE granted Intel
a license covering its entire portfolio of patents on computer systems and components.
This transaction constitutes a sale for exhaustion purposes. See United States v.
Masonite Corp., 316 U.S. 265, 278 (1942). Second, with LGE’s authorization, Intel sold
its microprocessors and chipsets to each defendant. Notably, this sale involved a
component of the asserted patented invention, not the entire patented system.
The trial court issued two orders on patent exhaustion. The first is unclear about
which sale the court relied upon in holding LGE’s system patent rights exhausted with
respect to defendants, but we understand it to be LGE’s license to Intel. Intel I at 9-10.
However, the second order, which reaffirmed the first, clearly relied on Intel’s sale of its
microprocessors and chipsets to defendants as the exhausting sale. LG Elecs., Inc.,
248 F. Supp. 2d at 917. In finding the unconditional sale requirement satisfied, the
court concluded that although “LGE is entitled to impose conditions on the sale of the
essential components of its patented products does not mean that it actually did so
here. To the contrary, defendants’ purchase of the microprocessors and chipsets from
Intel was unconditional, in that defendants’ purchase of the microprocessors and
chipsets from Intel was in no way conditioned on their agreement not to combine the
Intel microprocessors and chipsets with other non-Intel parts and then sell the resultant
products.” Id. at 916-17. We disagree.
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The LGE-Intel license expressly disclaims granting a license allowing computer
system manufacturers to combine Intel’s licensed parts with other non-Intel
components. Moreover, this conditional agreement required Intel to notify its customers
of the limited scope of the license, which it did. Although Intel was free to sell its
microprocessors and chipsets, those sales were conditional, and Intel’s customers were
expressly prohibited from infringing LGE’s combination patents. Cf. N.Y. U.C.C. Law
§ 2-202 (allowing contracts to be supplemented by consistent additional terms unless
the writing is intended to be complete and exclusive). The “exhaustion doctrine . . .
does not apply to an expressly conditional sale or license,” B. Braun Med. Inc., 124 F.3d
at 1426, so LGE’s rights in asserting infringement of its system claims were not
exhausted.
Conversely, the trial court declined to find LGE’s asserted method claims
exhausted. Several defendants contest this ruling on cross-appeal, and we reject their
challenge. Based on the above reasoning, even if the exhaustion doctrine were
applicable to method claims, it would not apply here because there was no
unconditional sale. However, the sale of a device does not exhaust a patentee’s rights
in its method claims. Glass Equip. Dev., Inc. v. Besten, Inc., 174 F.3d 1337, 1341 n.1
(Fed. Cir. 1999) (citing Bandag, Inc., 750 F.2d 903, 924 (Fed. Cir. 1984)). The court
was correct.
III. ’509 Patent
The ’509 patent discloses a system of networked computers capable of sharing
video images. The trial court’s exhaustion ruling did not extend to the ’509 patent;
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instead it granted summary judgment of noninfringement on the ground that LGE was
contractually barred from asserting infringement of the ‘509 patent claims against
defendants. This conclusion was based on a non-assertion provision in a contract
between LGE and Microsoft, which barred LGE from suing “[Microsoft], its suppliers,
their subsidiaries, or their licensees.”2 The court concluded that defendants were
included within this class of parties. Because a genuine issue of material fact exists as
to whether defendants fall within the protection of this contract provision, we reverse the
trial court’s grant of summary judgment of noninfringement.
In determining whether LGE is barred under the LGE-Microsoft agreement from
suing defendants for infringement, the dispositive issue is whether each defendant is a
Microsoft licensee. Defendants are third-party installers (“TPIs”) that assemble
computers for original equipment manufacturers (“OEMs”). The OEMs have licenses
with Microsoft, and it is undisputed that defendants were authorized to install Microsoft’s
products on the systems they manufacture. It is unclear, however, whether defendants’
authorization was under “have made” rights of the OEMs’ agreements with Microsoft,
whereby the OEM would be authorized to use a third party for completing work on its
2
The relevant contract provision provides:
{As partial consideration for the rights granted to
[[LGE] under the License Agreement(s), [LGE] agrees
not to (A) sue, or (B) bring, prosecute, assist or
participate in any judicial, administrative or other
proceedings of any kind against [Microsoft], its
Suppliers, their subsidiaries, or their licensees
(including without limitation [original equipment
manufacturer] customers and end users) for
infringement of [LGE’s] Patents . . . which occurs
during the Immunity period . . . on account of the
manufacture, use, sale, or distribution of . . . [the
product’s licensed to LGE by Microsoft].}
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behalf, or whether such authorization was as a sublicensee. If the work was authorized
solely by an OEM’s have made rights, and if that OEM were not authorized to grant
sublicenses under its agreement with Microsoft, then defendants may not be “licensees”
protected by the LGE-Microsoft non-assertion provision. Cf. Cyrix Corp. v. Intel Corp.,
77 F.3d 1381, 1388 (Fed. Cir. 1996) (distinguishing “have made rights” from
sublicenses). A genuine issue of material fact exists as to each defendant’s status.
On remand, defendants must establish that LGE is contractually barred from
pursuing infringement claims against them. See McCoy v. Mitsuboshi Cutlery, Inc., 67
F.3d 917, 920 (Fed. Cir. 1995). Although the parties have relied on the LGE-Microsoft
agreement in arguing whether or not defendants are Microsoft licensees, that
agreement is not the proper focus. It is the agreements between each OEM and each
defendant, and those between Microsoft and the OEM hiring each defendant that
matter.
The record indicates that FIC was both a TPI and an OEM. As an OEM, it had a
license from Microsoft, and therefore falls squarely within the scope of protected parties
under the non-assertion provision. However, the contract provision only bars suit
against Microsoft licensees for infringement “on account of” the manufacture, use, sale,
or distribution of Microsoft’s products. LGE does not dispute that there is no
infringement absent the Microsoft software in the accused devices, since the software
satisfies some, but not all, limitations of the ’509 patent claims. However, LGE argues
that any infringement was not “on account of” the use of Microsoft products. The trial
court rejected this argument, essentially reading the “on account of language” as a “but
for” requirement.
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The “on account of” language, however, is not susceptible of only one
interpretation. According to the Supreme Court in construing this phrase in an unrelated
statute, “the phrase ‘on account of’ does not unambiguously define itself.” O’Gilvie v.
United States, 519 U.S. 79, 82 (1996) (construing 26 U.S.C. § 7405(b)). Here, too, the
degree of causation required by this contract term is unclear. Because proper
construction requires factual considerations, we reverse the trial court’s grant of
summary judgment. Scott Galvanizing, Inc. v. Nw. EnviroServices, Inc., 844 P.2d 428,
433 (Wash. 1993); see also BNC Mortgage, Inc. v. Tax Pros, Inc., 46 P.3d 812, 819-820
(Wash. Ct. App. 2002) (“If the contract's written words have two or more reasonable
meanings (i.e., are ‘ambiguous’) when read in context, a court may not grant summary
judgment or direct a verdict; instead, it must put the case to a trier of fact.”) (citations
omitted).
The parties also dispute the trial court’s construction of several claim terms in the
’509 patent. Claim 35, from which asserted claims 45 and 51 depend, contains the
limitation of “a control unit for controlling the communication unit, wherein the control
unit comprises a [central processing unit (“CPU”)] and a partitioned memory system.”
LGE contends that the trial court erroneously construed the term “control unit” as a
means-plus-function limitation.
“‘[A] claim term that does not use ‘means’ will trigger the rebuttable presumption
that § 112 ¶ 6 does not apply.’” Lighting World, Inc. v. Birchwood Lighting, Inc., 382
F.3d 1354, 1358 (Fed. Cir. 2004) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1369 (Fed. Cir. 2002)). This presumption can be rebutted “by showing that
the claim element recite[s] a function without reciting sufficient structure for performing
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that function.” Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000) (citing Rodime PLC
v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999)). However, the
presumption “is a strong one that is not readily overcome.” Lighting World, Inc., 382
F.3d at 1358.
Here, the claim limitation at issue does not use the term “means,” and the
presumption against means-plus-function treatment is not overcome. The claim itself
provides sufficient structure, namely “a CPU and a partitioned memory system,” for
performing the stated function, “controlling the communication unit.” See id. at 1359-60.
Thus, the proper construction of “control unit” is “a combination comprising a CPU and a
partitioned memory system capable of controlling the communication unit.”
Defendants contend on cross appeal that the trial court also misconstrued claim
35 by not requiring multiple displays. In particular, they contend that the preamble term
“image processing system” requires multiple displays in light of the prosecution history.
However, the claim language does not include this limitation, and the trial court properly
refused to read it into the claim. Moreover, the body of the claim provides for “a
display.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)
(“This court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent
parlance carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’”) (citations omitted). Claim differentiation also supports
the trial court’s construction because dependent claim 38 adds the limitation of the
“image processing system further compris[ing] at least first and second displays coupled
to the CPU of the image processing system.” See Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (“Differences among claims can also be a useful guide in
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understanding the meaning of particular claim terms.” (citing Laitram Corp. v. Rexnord,
Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991))).
The prosecution history relied upon by defendants does not compel a different
construction. The patentee made arguments during prosecution to distinguish claims in
the parent application to the ’509 patent, which expressly required multiple displays,
over the prior art. These arguments, however, do not compel reading a multiple display
limitation into the ’509 patent, which does not expressly require multiple displays. See
Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple
patents derive from the same initial application, the prosecution history regarding a
claim limitation in any patent that has issued applies with equal force to subsequently
issued patents that contain the same claim limitation.” (emphasis added)).
IV. ’645 patent
The ’645 patent discloses a digital computer system that has devices called
agents that are interconnected by a system bus. The claimed system and
corresponding method require one agent, the requesting agent, to request access to a
memory stored on another agent, called the replying agent. The requested data is
organized as a matrix of memory cells, having column and row coordinates. The
“memory controller” of the replying agent processes the request from the requesting
agent by asserting a plurality of memory address control signals, including at least one
row address strobe (“RAS”) signal and one column address strobe (“CAS”) signal. This
“page mode memory access” operates by the assertion of an entire row of data followed
by the assertion and deassertion of multiple column addresses. By the RAS signal
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accessing an entire row followed by the assertion and deassertion of particular column
addresses, this page mode memory access differs from the conventional memory
access, which separately accessed each memory cell by asserting its individual row
address and column address. In the claimed invention, after the data is accessed, it is
then transferred to the requesting agent over the system bus.
LGE alleged infringement of system claims 1-4 and 6 and method claims 12-15
and 17. The trial court granted summary judgment of noninfringement of all asserted
claims, concluding that the RAS/CAS signals in defendants’ devices did not travel over
the system bus. However, the ’645 patent claims do not contain a limitation requiring
that the strobe signals travel over the system bus. Moreover, the specification does not
suggest that the strobe signals must travel over the system bus. To the contrary, Figure
5 shows an embodiment of the invention in which the strobe signals travel only
internally within the replying agent, not across the system bus.
In an attempt to impose this limitation on the claims, defendants rely on the
prosecution history. While the prosecution history is relevant to claim construction, “it
often lacks the clarity of the specification and thus is less useful for claim construction
purposes.” Phillips, 415 F.3d at 1317 (citations omitted). Here, defendants point to
statements in the prosecution history that the prior art does not teach “a page mode
type of access over a system bus from a requesting agent to a replying agent.” While
we agree that this and other statements in the prosecution history lack ideal clarity, we
do not find that they rise to the level of disclaiming or limiting the scope of the express
claim language. Therefore, the trial court erred in construing the ’645 claims to require
the RAS and CAS signals to travel over the system bus. In addition, there is a genuine
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issue of material fact as to whether the accused devices and methods utilize strobe
signals. LGE’s expert submitted an affidavit that the accused devices employ strobe
signals, which precludes summary judgment.
In the alternative, defendants contend that LGE failed to present evidence of an
“end of access signal.” This signal, which is required by the claims, is generated by the
requesting agent and received by a detecting means coupled to the memory address
control signal asserting means. When the detection means receives this end of access
signal, the operation is halted. Defendants contend that LGE failed to establish the
existence of a genuine issue of material fact as to whether the accused devices contain
this limitation. However, the trial court did not consider this argument, and we will not
address this factual issue in the first instance.
LGE also argues that the trial court’s construction of the “requesting agent” claim
limitation was in error. The court construed this term as “a device coupled to the system
bus that requests access to a memory located on a replying agent.” Claim Construction
Order at 6-9. LGE contends that an industry standard, which was incorporated into the
specification by reference, provides the proper claim construction of this term. ’645
patent col. 3 ll. 51-56.3 The incorporated standard explicitly defines the term
3
The specification provides:
Although the method and apparatus of the
invention will be described herein in the context of a
Multibus II environment, it should be appreciated that
the invention may be practiced in many digital
computer systems having a bus for transferring data
between at least two agents interconnected upon the
bus.
The operating characteristics of the Multibus II
are described in a document entitled “High
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“requesting agent” as “an agent that has entered into the arbitration function for bus
access.” Defendants contend, however, that the patentee did not act as its own
lexicographer by incorporating this industry standard by reference. The trial court did
not accept LGE’s proposed construction, concluding that it was a preferred embodiment
and did not limit the claimed invention. The difference in the two constructions is
temporal: LGE’s proposed construction defines an agent as a requesting agent only
when it is engaged in arbitration for bus access, whereas the trial court’s construction
defines a requesting agent regardless of whether it is actively engaged in arbitration.
We have recognized that the “[i]nterpretation of descriptive statements in a
patent's written description is a difficult task, as an inherent tension exists as to whether
a statement is a clear lexicographic definition or a description of a preferred
embodiment.” E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). “Thus in determining whether a statement by a patentee was intended to be
lexicographic, it is important to determine whether the statement was designed to define
the claim term or to describe a preferred embodiment.” Id. We agree with the trial court
and defendants that the patentee did not act as its own lexicographer here. Instead, the
industry standard was incorporated as a preferred embodiment. The specification
makes this clear by explaining that “[a]lthough the method and apparatus of the
invention will be described herein in the context of a Multibus II environment, it should
Performance 32-Bit Bus Standard P1296” which was
produced by the IEEE microprocessor standards
committee P1296 working group, Jun. 20, 1986, draft
2.0, the disclosure of which is incorporated herein in
its entirety.
’645 patent col. 3 ll. 45-56.
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be appreciated that the invention may be practiced in many digital computer systems
having a bus for transferring data between at least two agents interconnected upon the
bus.” ’645 patent col. 3 ll. 45-49.
Chimie v. PPG Industries, Inc., 402 F.3d 1371 (Fed. Cir. 2005), does not compel
a different result. In Chimie, we were confronted with the claim terms “dust-free and
non-dusting.” After concluding that these terms were relative and could only be
understood by comparison with the prior art, we concluded that only one standard was
disclosed in the specification for making such a comparison. We limited these claim
terms to the disclosed standard. Here, however, there is no relative term that cannot be
understood without reference to an industry standard.
But, this does not end our inquiry. The proper claim construction is “the ordinary
and customary meaning . . . that the term would have to a person of ordinary skill in the
art in question at the time of the invention, i.e., as of the effective filing date of the patent
application.” Phillips, 415 F.3d at 1313 (citations omitted). “When prior art that sheds
light on the meaning of a term is cited by the patentee, it can have particular value as a
guide to the proper construction of the term, because it may indicate not only the
meaning of the term to persons skilled in the art, but also that the patentee intended to
adopt that meaning.” Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1045
(Fed. Cir. 2000). Although we have concluded that the patentee did not expressly adopt
the definition of “requesting agent” in the incorporated industry standard, that standard
remains relevant in determining the meaning of the claim term to one of ordinary skill in
the art at the time the patent application was filed, and it is treated as intrinsic evidence
for claim construction purposes, see V-Formation, Inc. v. Benetton Group SpA, 401
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F.3d 1307, 1311 (Fed. Cir. 2005) (“This court has established that ‘prior art cited in a
patent or cited in the prosecution history of the patent constitutes intrinsic evidence.’”)
(citations omitted).
Here, the trial court erred by failing to give proper weight to the incorporated
industry standard; it failed to consider the standard as intrinsic evidence of the meaning
to one of ordinary skill in the art as of the filing date. After considering the standard, in
addition to the patent claims and specification, we conclude that LGE’s proffered
definition based on the standard is correct. Thus, we construe “requesting agent” as
“an agent that has entered into the arbitration function for bus access.” This
construction is entirely consistent with the specification, which provides that “at one time
in the operation of the system . . . the requesting agent 12 may be a replying agent, and
that the replying agent 16 may at that time be a requesting agent.” ’645 patent col.4 ll.
8-11. This language makes clear that the classification of an agent depends upon the
function the agent is performing at any given time, i.e., whether it is engaged in
arbitration at a given moment.
V. ’733 patent
The ’733 patent discloses a rotating priority system that provides multiple
computer devices alternating access to a system bus, which is the pathway over which
the various components of a computer system transmit data. This system addresses
the problem of “hogging,” in which one component of a computer system monopolizes
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access to the system bus. The asserted claims of the ’733 patent, method claims 15-
19,4 establish a rotating priority system that limits each device’s access to the bus. In
particular, claim 15 sets forth two steps of the method as “counting a number of
accesses by the device to the bus” and then “in response to a predetermined number of
accesses to the bus, giving another [device] the highest priority.” The trial court granted
summary judgment of noninfringement of the ’733 patent, holding that the claim
limitation of “counting a number of accesses by the device to the bus” was not practiced
in the accused method.
The court construed the claim limitation “counting a number of accesses” as
“counting the number of times a device gains use of the bus.” Claim Construction Order
at 38-41. The parties do not directly challenge this construction, but LGE argues that a
genuine issue of material fact exists as to whether the accused method performed this
step. LGE argues that the master latency timer (“MLT”) in defendants’ accused devices
performs this step. MLTs count clock signals when an anchor node has possession of
4
Claim 15, the only independent claim at issue, provides:
A method for determining priority of access to a bus among
a set of devices coupled to the bus, each device being
represented for priority purposes by a node in a group of
nodes and each node having a priority relative to a single
node currently having the highest priority, the method
comprising the steps of:
receiving an access request in a node from a
represented device;
determining whether any node with a higher priority
has received an access request;
if no such node has received an access request,
permitting the device to access the bus;
counting a number of accesses by the device to the
bus; and
in response to predetermined number of accesses to
the bus, giving another node the highest priority.
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the bus. Defendants contend that although an MLT limits the time duration of bus
access by a device, it does not count the number of accesses by the device.
Defendants also contend that, in some instances, the MLTs continue counting when
clock signals pass even if no access to the bus is taking place, such as during WAIT
periods when no data is being placed on the bus.
LGE responds that the bus is accessed even during WAIT periods, regardless of
whether any data is placed on the bus, because the device has access to the bus. LGE
points out that the purpose of the invention is to eliminate “hogging” the bus, and that
the bus is “being hogged” even during WAIT periods. Further, LGE argues that, under
the trial court’s construction, a device still has “use of the bus” during a wait period.
LGE points to the discussion in the ’733 patent relating to Figure 8. ’733 patent col. 21.
In this preferred embodiment, the description includes a programmable node grant
counter NGCNT 720. The description explains that when certain conditions are met, an
enable count input is asserted and during a bus access cycle a transition of a clock
signal causes NGCNT 720(1) to increment by one count. Therefore, when certain
criteria are met, a clock signal can create an access count.
There is a genuine issue of material fact as to whether the accused devices
count the number of accesses. See Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d
1235, 1240 (Fed. Cir. 2003) (“Infringement, both literal and under the doctrine of
equivalents, is a question of fact.” (citing Insituform Techs., Inc. v. Cat Contracting, Inc.,
161 F.3d 688, 692 (Fed. Cir. 1998))). The central issue is whether the bus is accessed
on each clock signal so that the clock signals, in effect, count the number of accesses to
the bus. The trial court agreed that LGE’s argument is consistent with its claim
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construction, but found that it failed to present evidence supporting its position. To the
contrary LGE presented sufficient expert testimony on this issue to avoid summary
judgment. LGE’s expert testified that some type of signal is asserted with each clock
signal, and, if proven, this would in effect make the MLTs count accesses. The
summary judgment is vacated.
VI. ’641 patent
The ’641 patent discloses a system for ensuring that the most current data is
retrieved from the main memory. Because individual devices can update data in their
own local cache memory without immediately writing the new data back to the main
memory, data in the main memory can be “stale.” Therefore, the system claimed in the
’641 patent monitors the data being transferred over the bus, and if data stored in the
cache matches the address of the data being transferred, a hold signal is asserted.
Then, the data being transferred is compared with the data on the cache. If there is a
difference, the data stored on the cache, which is the most recent data, is also
transferred.
The trial court concluded the ’641 patent claims asserted were not infringed
based on its patent exhaustion holding, which we reverse above. However, LGE
contends that the trial court also improperly construed claims 1, 5, and 14. In particular,
LGE disputes the trial court’s construction of “cache memory means” (in claims 1 and 5)
and “cache memory” (in claim 14), which were construed as “one of at least two high
speed memories located close to the CPU of a computer to give the CPU faster access
to blocks of data than could be taken directly from the larger, slower main memory and
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never using valid/invalid bits.” Claim Construction Order at 18-22. LGE contends that
the trial court improperly read claims 1 and 14 as requiring at least two caches. It also
contends that the trial court improperly read in the limitation that neither cache uses
valid/invalid bits.
We agree with LGE that the trial court erred in reading the limitation of at least
two high speed memories into claims 1 and 14. Unlike claim 5, which expressly
requires at least two cache memory means, claims 1 and 14 have no such express
limitation. Cf. Phillips, 415 F.3d at 1314 (“Differences among claims can also be a
useful guide in understanding the meaning of particular claim terms.” (citing Laitram
Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991))). To the contrary, claims
1 and 14 only require one or more CPUs and a cache memory coupled between the
CPU and the bus. Because the claims expressly cover one central processing unit,
they logically also cover systems with only one cache coupled between that single
central processing unit and the bus. Defendants rely on the fact that the written
description describes a system with multiple caches. However, as we explain in more
detail below, the patent application initially described two inventions, and these
statements relate to the other invention that is not claimed in the ’641 patent.
We also agree with LGE that the trial court improperly read the limitation of never
using valid/invalid bits into the claims. The patent’s background section suggests that
valid/invalid bits were used to manage data in systems with more than one cache. In
particular, it explains that the purpose of the invalid bit is to redirect a processor
attempting to access an address in its cache to another cache with a more updated
memory associated with that address. ’641 patent col. 1 ll. 44-52. The claims at issue
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do not themselves expressly include or exclude the use of valid/invalid bits.
Defendants, however, contend that the trial court’s construction is supported by the
specification and prosecution history. The specification states that “a further object of
this invention [is] to provide a cache memory system wherein the use of valid/invalid
data indicators are avoided.” ’641 patent col. 1 ll. 65-67. It further states that “[i]t should
be kept in mind during the following description, that the invention maintains data
integrity by assuring that cache data is always the most up-to-date in the system. Thus,
there never is a ‘valid’ or ‘invalid’ indication with respect to any cache data as it is
always assured that if data is provided by a cache, that it invariably is valid (i.e. most
up-to-date).” Id. col. 3 ll. 27-33.
Defendants are correct that reviewing the specification in construing claims is
appropriate, Phillips, 415 F.3d at 1315-17, but such review need not be done in the
abstract. Here, as noted above, the original patent application disclosed two inventions.
As the examiner observed, one invention was “drawn to a cache system for updating
each copy of the data stored in a plurality of caches when the data is modified,” and the
other was drawn to “a cache system for sending the most current data to a requestor by
monitoring the address of a data on a data bus for detecting whether the [data] is stored
and modified in the cache.” The patent examiner concluded that these two inventions
were distinct and required the applicant to elect one invention. The applicant ultimately
limited the original application to the latter group of claims, which issued as the ’641
patent, and the other claim group was separated into a different application, which
ultimately issued as U.S. Patent No. 5,097,409.
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Here, the discussion of valid/invalid bits in the specification was relevant to multi-
cache systems, because the patent’s background provides that “[s]o long as a write
back cache is utilized with only one processor, data management is straight forward.
However, when more than one central processor uses the same main memory, data
management problems multiply.” ’641 patent col. 1 ll. 39-43. The patent explains that
the data management problems in multiple CPU systems are a result, at least in part, of
their containing more than one cache memory. Managing data in multiple cache
systems was the subject of the invention not elected during prosecution and, therefore,
the statements in the specification referring to valid/invalid bits are not relevant to the
invention ultimately claimed in the ’641 patent. Cf. Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999) (observing that a written description
describing multiple inventions may not be relevant “in toto” to each of those inventions).
Indeed, the unelected claims expressly contained the limitation that the “cache memory
means hav[e] no provisions for indicating the invalidity of said data units,” whereas the
elected claims contained no such limitation.
For the same reasons, we do not find that the patentee disavowed the use of
valid/invalid bits under the doctrine of specification disclaimer. “[T]he specification may
reveal an intentional disclaimer, or disavowal, of claim scope by an inventor. In that
instance, . . . the inventor has dictated the correct claim scope, and the inventor’s
intention, as expressed in the specification, is regarded as dispositive.” Phillips, at
1316; see also SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1341
(Fed. Cir. 2001). However, because the statements relied upon by defendants relate to
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the invention not elected during prosecution, there is no clear disavowal with respect to
the invention actually claimed in the ’641 patent.
VII. ’379 patent
Like the ’641 patent, the ’379 patent claims a system and method for ensuring
that the most current data, as opposed to “stale” data, is retrieved from memory. The
claimed invention relates to how a memory controller coordinates requests to read data
from the memory and requests to write data to the memory. Generally, when a read
request is asserted that corresponds to a buffered write request, the write request must
go first to ensure that what is read from memory is the most current data. The invention
disclosed in the ’379 patent does this by comparing the address of each read request to
the buffered write requests, noting any matches, halting read execution when there is a
match, and executing the buffered write requests.
LGE contends that the trial court erred in construing system claims 1 and 23 as
requiring all write requests to be executed after a match is detected, as opposed to
executing any number of write requests until the write request corresponding to the
matching read request is executed. We agree. The claim language does not require all
write requests to be executed after a match is detected. Moreover, claim 2, which
depends from claim 1, expressly requires the execution of all write requests, as does
independent method claim 7. See Phillips, 415 F.3d at 1314 (recognizing the utility of
claim differentiation). In addition, the claim limitation at issue is written in means-plus
function-claim language (“means for . . . causing an execution of buffered write
requests”). Because the recited function is clear on its face, it was improper to
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incorporate the additional functional limitation of executing “all” buffered write requests.
Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1357 (Fed. Cir. 1999);
see also Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir.
2001) (“[A] court may not import functional limitations that are not recited in the claim
. . . .”).
LGE also disputes the trial court’s grant of summary judgment of noninfringment
of method claim 7.5 This claim explicitly requires the step of buffering “each” read
5
Claim 7 provides:
In an information processing system having a system bus for
coupling together a plurality of bus connections, one of the
bus connections being a memory control unit coupled to one
or more memory units, the memory control unit being
responsive to address and data signal lines of the system
bus for writing information units to and for reading
information units from the memory units, a method of
reading and writing the information units comprising the
steps of:
buffering write requests, including write addresses, as
they are received from the system bus;
buffering read requests, including read addresses, as
they are received from the system bus; comparing
when received each read address against buffered
write addresses, if any, to determine if a received
read address has an address value within a
predetermined range of address values of a buffered
write address;
if a received address is determined not to be within
the predetermined range of addresses of any buffered
write addresses then:
first executing in sequence all buffered read
requests; and then executing in sequence all
buffered write requests;
else if a received address is determined to have an
address value within the predetermined range of
address values of any buffered write address:
first executing in sequence all buffered read requests
up to but not including the received read request
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request and then comparing that read request to the buffered write addresses. If the
read request matches a write request, then the claim provides for the following steps:
executing all buffered read requests up to the matching request; then executing “all
buffered write requests;” and then executing the matching read request. If, however,
the comparison of the read request does not yield a match to a buffered write request,
then all read requests are executed. Defendants contend, and LGE does not appear to
dispute, that the accused devices do not operate in this manner. Instead, they contend
that when a buffered read request matches a buffered write request, their devices do
not execute “all” write requests before executing the matching read request, but instead
only execute the write requests up to the one matching the read request, and then
execute the matching read request.
The trial court concluded, and we agree, that there was no literal infringement of
this claim. The claimed method requires handling each read address in one of two
ways depending on whether the read request matches a write request. The second
way, which applies when the pending read request matches a pending write request, is
to execute all write requests before executing the read request. LGE contends that
when the matching write request happens to be the last in the buffer, all write requests
are in fact executed before the matching read request. Although LGE correctly asserts
that any practice of the claimed method would be infringement, Bell Commc’ns
Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622 (Fed. Cir. 1995), the claim
which was determined to be within the predetermined
range;
then executing all buffered write requests; and
then executing the buffered read request which
was determined to be within the predetermined range.
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must be considered in its entirety. Here, the claim requires each read request to be
compared with the buffered write requests, and then one of two alternatives be followed.
Because the claim was drafted with this limitation, the fact that the accused device
occasionally operates in such a manner does not amount to literal infringement of claim
7. For infringement to be found, the claim requires the accused device to operate in this
manner in response to “each” read request.
The trial court also found, as a matter of law, that there was no infringement
under the doctrine of equivalents. In doing so, it rejected LGE’s argument that
performing all of the write requests up to (and including) the one matching the read
request is an insubstantial difference from the claim limitation of performing all write
requests before executing the incoming read request. The trial court reasoned that
LGE’s equivalence theory would vitiate the claim limitation of performing “all” write
requests before an incoming read request matching a write request.
The doctrine of equivalents operates under the “all limitations rule,” whereby
“equivalence [is] assessed on a limitation-by-limitation basis, as opposed to from the
perspective of the invention as a whole.” Freedman Seating Co. v. Am. Seating Co.,
420 F.3d 1350, 1358 (Fed. Cir. 2005) (citing Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 29 (1997)). This doctrine, by its very nature, extends beyond
the patent’s literal claim scope, because otherwise a finding of no literal infringement
would be a foreordained conclusion of no infringement at all. Ethicon Endo-Surgery v.
U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998). At the same time, however,
“[i]f our case law on the doctrine of equivalents makes anything clear, it is that all claim
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limitations are not entitled to an equal scope of equivalents.” Moore U.S.A., Inc. v.
Standard Register Co., 229 F.3d 1091, 1106 (Fed. Cir. 2000).
“There is no set formula for determining whether a finding of equivalence would
vitiate a claim limitation, and thereby violate the all limitations rule. Rather, courts must
consider the totality of the circumstances of each case and determine whether the
alleged equivalent can be fairly characterized as an insubstantial change from the
claimed subject matter without rendering the pertinent limitation meaningless.”
Freedman Seating Co., 420 F.3d at 1359 (citations omitted). LGE contends that
performing some of the write requests is a permissible equivalent to performing all write
requests, and that while performing no write requests may vitiate the claim language,
performing some does not. As discussed above, there is inevitably a range of
equivalents for performing all write requests, even if that range is narrow. See Ethicon
Endo-Surgery, 149 F.3d at 1317. If substantially all or nearly all write requests are
performed by the accused devices before each matching read request, then the
doctrine of equivalents would be fully applicable without vitiating the claim language.
Although such scope would be outside of the claim’s literal scope, which is true in any
doctrine of equivalents analysis, it would not be inconsistent with the language of the
claim. Therefore, a genuine issue of material fact exists as to whether the accused
device can function within the narrow range of equivalents that we have described
above, and we vacate the trial court’s grant of summary judgment of noninfringement on
this ground.
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Conclusion
Accordingly, the judgment of the United States District Court for the Northern
District of California is affirmed in-part, reversed in-part, and vacated in-part. The case
is remanded for further proceedings in accordance with this opinion.
COSTS
LGE shall have its costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED
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