Semcon IP v. Amazon.com, Inc.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

Claim Construction J

The Parties’ Positions

Plaintiff submits: Defendant’s indefiniteness position is premised on the Asserted Patents having to provide how the recited determinations are made. This is an issue of enablement, not definiteness. Dkt. No. 48 at 13–14.

In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’061 Patent col.1 ll.42–45, col.5 ll.63–66. Extrinsic evidence: Thornton Decl. ¶¶ 46–48 (Plaintiff’s Ex. F, Dkt. No. 48-7 at 18–19); Carbonell Decl. ¶¶ 37–41 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 15–18).

Defendant responds: “Determining” the parameters stated in the claims may cover “a variety of activities” and neither the claims nor the rest of the specification of the Asserted Patents provide guidance regarding what activities are within the scope of determining in the claims. For the meanings of the Determining Terms to be clear, the claims or the technical disclosure must provide either an input or output and also “the process or algorithm for how the actual determining is made.” The patents, however, “fail to disclose any techniques for determining” the recited parameters. Thus, the meanings of the Determining Terms are not reasonably clear. Dkt. No. 50 at 25–28.

In addition to the claims themselves, Defendant cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’061 Patent col.3 ll.49–52, col.4 ll.12–20. Extrinsic evidence: Thornton Decl. ¶¶ 46–56 (Defendant’s Ex. H, Dkt. No. 50-9 at 18–23).

Plaintiff replies: The issue of whether the Asserted Patents disclose any techniques for determining a recited parameter is not an issue of claim construction. Rather, this is an issue of enablement. In any event, the patents disclose using a look-up table to determine frequency. Dkt. No. 53 at 5–6.

Plaintiff cites further intrinsic evidence to support its position: ’061 Patent col.5 ll.23–28, col.5 ll.63–67.

Analysis

The issue is whether the Asserted Patents must provide algorithms for the various “determining” functions recited in the claims for the claims to be definite. They do not.

The Court is not persuaded by Defendant’s argument that for a claim including functional language to be definite, the functional language must be supported by descriptions of algorithms for how the function is performed. While this may be true when 35 U.S.C. § 112, ¶ 6 applies, Defendant provides no legal support for this as a rule separate from § 112, ¶ 6 and does not directly argue that § 112, ¶ 6 applies to the Determining Terms. Thus, whether the “determining” language is supported by the written description is determined under the enablement or written-description statutory requirements, it is not an issue of claim construction.

Accordingly, the Court holds that Defendant has not proven any claim indefinite by reason of including “determining” in the claim language and holds that the Determining Terms have their plain and ordinary meaning without the need for further construction.

Case No. 2:18-cv-00192

Semcon IP v. Amazon.com, Inc.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

Claim Construction I

The Parties’ Positions

Plaintiff submits: “Voltage generator” and “changes … to the predetermined voltage level as a result of a specific input” limitations should not be imported into claims that simply recite causing a voltage change. Dkt. No. 48 at 20–21.

In addition to the claims themselves, Plaintiff cites the following extrinsic evidence to support its position: Carbonell Decl. ¶¶ 58–59 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 23).

Defendant responds: As set forth by the Court in Huawei, the voltage output of the power supply is a function of input to the power supply. As described in the Asserted Patents, the voltage generator is external to the processor and thus requires a command or request to cause a voltage change to a predetermined value. This is distinct from random voltage fluctuations. Dkt. No. 50 at 23–25.

In addition to the claims themselves, Defendant cites the following intrinsic evidence to support its position: ’061 Patent fig.1, col.2 ll.46–60, col.6 ll.2–15, col.6 ll.30–36, col.7 ll.32–34.

Plaintiff replies: As the Court held in Huawei, the meanings of these terms are readily understandable in the context of the claims. There is nothing in the patents that mandates that “causing” a voltage change necessarily requires a “voltage generator” or a “determined” voltage. Dkt. No. 53 at 10–11.

Analysis

There are two issues in dispute. First, whether causing a voltage change necessarily requires changing the voltage to a determined level as a result of a specified input. It does not. Second, whether causing a voltage change necessarily requires a voltage generator. It does not.

As set forth in the section of “voltage source,” the patents use a variety of language in regard to providing voltages. For example, the patents provide a “voltage source,” a “programmable power supply,” a “programmable voltage supply,” and “voltage generator.” See, e.g., ’247 Patent Claims 10 and 16; ’061 Patent col.2 l.53, Claim 10. In light of this, the Court will not read a “voltage generator” limitation into the terms at issue here.

Also as set forth above, the Court’s Huawei construction regarding the output voltage level being “specified by an input” relate to programmable and selectable voltage sources and power supplies, not to every source of voltage. The Court rejects Defendant’s proposal to inject this limitation into each of the Causing-a-Change-in-Voltage Terms.

As to whether “causing” a voltage change according to the claims includes within its scope random voltage changes, whatever their cause, the Court holds it does not. In the context of the Asserted Patents, the plain meaning of causing a voltage change requires a controlled and purposeful, rather than accidental, change. See, e.g., ’061 Patent col.6 ll.9–13, col.7 ll.32–35. Indeed, at oral argument Plaintiff indicated that a random voltage change is not “caused” as claimed.

Accordingly, the Court rejects Defendant’s request to read in the limitations of “voltage generator changes the voltage furnished by the voltage generator to the determined voltage level as a result of a specified input.” The Court holds that the Causing-a-Change-in-Voltage Terms have their plain and ordinary meaning without the need for further construction.

Case No. 2:18-cv-00192

Semcon IP v. Amazon.com, Inc.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

Claim Construction H

The Parties’ Positions

Plaintiff submits: As the Court held in Huawei, a “voltage source” may include a power supply but is not necessarily a power supply nor does it necessarily include a power supply. In fact, a claim limitation construed by the Court in Huawei expressly recited a “voltage source includes a programmable power supply.” There would be no need to recite this if a voltage source inherently was a power supply. Thus, a “voltage source” is not necessarily a power supply that provides distinct voltage levels specified by an input. Dkt. No. 48 at 19–20.

Defendant responds: As the Court held for similar terms in Huawei, the “voltage source” necessarily is a power supply that provides different voltage outputs. As recited in the claims (Claim 10 and 17 of the ’247 Patent), the “voltage source” is used to change the processor supply voltage. As described in the Asserted Patents, the voltage source that does this is a “programmable voltage generator” that provides selectable and distinct voltage levels to the processor. Ultimately, the “voltage source” of the claims must be able to provide different voltages to the processor. Dkt. No. 50 at 22–23.

In addition to the claims themselves, Defendant cites the following intrinsic evidence to support its position: ’247 Patent col.2 ll.63–65, col.6 ll.12–16.

Plaintiff replies: Defendant’s proposed construction is not clear because it is “unclear what makes a voltage level ‘distinct.’” Further, it imports limitations from “programmable” and “selectable” sources expressed in different claims. Dkt. No. 53 at 10.

Plaintiff cites further intrinsic evidence to support its position: ’247 Patent col.6 ll.9–11.

Analysis

There are two issues in dispute. First, whether a “voltage source” is necessarily a “power supply.” It is not. Second, whether the voltage source is necessarily “configured to provide one of a plurality of distinct voltage levels specified by an input.” It is not.

To begin, the Court’s construction of various “programmable”/“selectable” “power supply” and “voltage” terms in Huawei was directed to resolving the dispute over whether “programmable” and “selectable” means that the voltage supplied was “one of several possible voltage outputs [provided] in response to an input.” Huawei, 2017 U.S. Dist. LEXIS 108040, at *42. Neither the issue of whether the voltage source of the claims inherently is (or includes) a power supply nor the issue of whether the voltage source of the claims inherently is configured to provide a plurality of distinct voltage levels specified by an input was raised or addressed in Huawei. Id. at *40–43. The “voltage source” terms here, from Claims 10 and 17 of the ’247 Patent, were not before the Court in Huawei. Id.

The claims at issue, Claims 10 and 17 of the ’247 Patent, both expressly provide that the “voltage source” is capable of providing at least two different voltage levels, but do not limit how that capability is used or implemented as Defendant advocates. For example, Claim 10 recites: “using the processing device, controlling a voltage source to change a voltage supplied to the processing device from the first voltage to the second voltage.” Claim 17 similarly provides, “the processing device operable to control the voltage source to change from providing the first voltage to providing the second voltage.” It is plain without construction that the two voltage levels supplied or provided by the “voltage source” in these claims are distinct—the voltage is changed therefore the levels are different. Claim 10 further provides that the “second voltage, [has] a magnitude less than a magnitude of the first voltage.” The claims also require that the processing device implement the change. That said, there is no requirement that the output of the voltage source be “specified by an input.” In Huawei, the “specified by an input” limitation was a function of the expressed “selectable” or “programmable” limitations, not of the “voltage source” limitations. Huawei, 2017 U.S. Dist. LEXIS 108040, at *40–43. Lacking the “selectable” or “programmable” limitation expressed in other claims, the Court rejects Defendant’s proposal to limit the output of the voltage source in Claims 10 or 17 to that “specified by an input.”

The Court also rejects Defendant’s invitation to rewrite “voltage source” to “power supply.” In the exemplary embodiments, a “power supply” and a “voltage generator” are distinct concepts. See, e.g., ’061 Patent col.2 ll.49–52 (“The hardware includes a processor 10, a clock generator 11, a programmable voltage generator 12, system memory (DRAM) 14, and an external battery (or other power supply) 13.”). In Figure 1, the voltage generator, not the power supply, provides the voltage to the processing unit. From this, the Court understands that a voltage source may be distinct from a power supply. Indeed, it is not clear that the Figure 1 embodiment has anything that satisfies the “voltage source” terms under Defendant’s proposed construction. The power source is a battery and there is no suggestion that the battery is configurable to provide different voltage outputs in response to an input. That function is performed by the voltage generator, which is distinct from the power supply.

Accordingly, the Court rejects Defendant’s proposal to limit a voltage source to a “power supply configured to provide one of a plurality of distinct voltage levels specified by an input.” The Court holds that the term “voltage source” has is plain and ordinary meaning without the need for further construction.

Case No. 2:18-cv-00192