Semcon IP v. Amazon.com, Inc.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

Claim Construction G

The Parties’ Positions

Plaintiff submits: The generator or source recited in these terms is not necessarily located either within or outside the processor, as Defendant proposes. In fact, some claims expressly recite the location of the generator or source while others do not. Thus, it would be improper to import location limitations from the described embodiments into the claims. Dkt. No. 48 at 18–19.

In addition to the claims themselves, Plaintiff cites the following extrinsic evidence to support its position: Carbonell Decl. ¶ 57 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 22–23); Thornton Decl. ¶¶ 74–79 (Plaintiff’s Ex. F, Dkt. No. 48-7 at 30–32).

Defendant responds: The Asserted Patents’ technical disclosure and the patentee’s positions in prosecution of the ’061 Patent make clear that the clock source and clock generator are external to the processor and the frequency generator is internal to the processor. During prosecution, the patentee disparaged prior-art frequency generators that are “external to and separate from the processor” as they “slowed processing,” among other things. In the technical disclosure of the patents, an external clock generator provides a signal to an internal frequency generator to generate the processor’s core clock. Thus, frequency generator is on the same chip as the processor and the clock generator is not. Dkt. No. 50 at 20–22.

In addition to the claims themselves, Defendant cites the following intrinsic evidence to support its position: ’061 Patent fig.1, col.2 ll.58–60, col.3 ll.18–23; ’061 Patent File Wrapper May 7, 2002 Preliminary Amendment at 6 (Defendant’s Ex. L, Dkt. No. 50-13 at 7).

Plaintiff replies: The prosecution-history statements regarding the advantages of having a generator internal to the processor were made in the context of a claim amendment requiring a clock generator on the same chip as the processor. This is not paramount to a disclaimer of frequency generators that are not on the same chip for claims that do not express the “on the same chip” limitation. Nor is it a disclaimer of clock generators that are on the same chip. Dkt. No. 53 at 9–10.

Plaintiff cites further intrinsic evidence to support its position: ’061 Patent File Wrapper May 7, 2002 Preliminary Amendment (Defendant’s Ex. L, Dkt. No. 50-13 at 6–7, 9).

Analysis

There are two main issues in dispute, both related to the location of the particular source/generator. First, whether the frequency generator of the claims is necessarily on the same chip as the processor. It is. Second, whether the clock generator of the claims is necessarily external to the processor. It is not.

The Asserted Patents repeatedly distinguish the invention from the prior art based on the processor frequency generator being located on the same chip as the processor. For example, in describing the exemplary embodiment, the patents provide: “The processor 10 includes on the same semiconductor chip a number of components including a processing unit 16 and a programmable frequency generator 17.” ’061 Patent col.2 ll.58–60 (emphasis added). Placing the generator on the same chip addressed some of the failings of the off-chip generators of the prior art:

• It should be specifically noted that contrasted to prior art systems, the programmable frequency generator is able to provide individual frequencies selectable for each of these components. Thus, prior art arrangements utilize an external clock generator to provide all of the different frequencies utilized by the system. This has a number of effects which are less than desirable. Since the clocks are generated off-chip, the time needed to change frequency is long. Since in an integrated processor all clocks are created from a single slow clock off chip, if the core frequency changes all of the frequencies change with it. Thus, a frequency furnished a single component cannot be changed without affecting a change in other frequencies. The voltage furnished by the external clock generator does not change even though reduced frequencies adapted to provide reduced levels of operations are furnished for various components of the system. A number of other factors slow the response of the system to changes in the various clocks when an external clock is used to generate the various operating frequencies for a system.

Id. at col.3 ll.27–46 (emphasis added).

The patents again explain how placing the frequency generator on the same chip as the processor benefits the prior-art failings:

• Thus, by utilizing the phase-lock-loop generator 17 to determine a core clock frequency and dividing that frequency by a plurality of different values determined by the control software, the operating frequencies for the different components of the system may be individually controlled and furnished to other components of the processor without the necessity of crossing chip boundaries with the consequent slowing caused by negotiating the boundaries.

Id. at col.4 ll.21–28 (emphasis added).

The patentee reiterated this on-chip/off-chip distinction during prosecution of the ’061 Patent:

• As explained at page 2, line 22, through page 3, line 12, prior to the invention, this had been accomplished by one or more frequency generators, state machines or power management units, and power supplies all of which are external to and separate from the processor itself. Frequency generators which are external to the processor cause delays in crossing various interfaces, eliminated the ability to provide frequencies which may be changed in different ratios for different components, and generally slowed processing

• …

• The present invention improves on the prior art by providing a frequency generator on the same silicon chip as the processor. This eliminates the various interfaces which slow operation, allows direct control of the frequency by the processor itself, and facilitates the maintenance of a plurality of optimum frequencies for different components associated with the processor under control of the processor. None of these are possible utilizing prior art knowledge including that of Horden.

’061 Patent File Wrapper May 7, 2002 Preliminary Amendment at 6–7, Dkt. No. 50-13 at 7–8 (emphasis added).

Taken together, the repeated description of the invention as having an on-chip frequency generator, the repeated extolling of the virtues of an on-chip generator, and the repeated criticism of off-chip generators clearly point to the conclusion that the frequency generators of the claims are limited to on-chip generators. See UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 823–24 (Fed. Cir. 2016).

The frequency generating aspects of the claimed frequency generators are clearly expressed in the claims and do not need to be clarified in a construction. For example, Claim 56 of the ’061 Patent (reexam) states: “the clock frequency generator to furnish … an output clock frequency for the central processor.” Claim 14 of the ’708 Patent similarly provides: “a programmable frequency generator providing a clock signal with an operating frequency at a first frequency; means for executing instructions, said means coupled to said clock signal.” Claim 1 of the ’627 Patent provides: “a frequency generator configured to receive a first clock signal from a clock generator and to adjust a frequency of said first clock signal to furnish clock signals at different frequencies to said processing unit and said second component.” Claim 2 of the ’247 Patent provides: “controlling a frequency generator, using the processing device, to provide the operating frequency to the processing device.” Simply, there is no need to construe the frequency-generator terms to clarify what it provides and to what component it provides it.

The Court understands that even though the frequency generator of the claimed invention is on the same chip as the processor that does not mean the clock source/generator utilized by the frequency generator is necessarily external to that chip. While the described embodiment provides an “external” clock, there is not sufficient language to read this as key to the invention and import “external” into the claims. Unlike the above-cited description of the on-chip nature of the frequency generator as key to the invention, the description of the clock source/generator does not suggest the off-chip nature is key to the invention. Further, the relationship between the “clock frequency source”/“clock generator” and the frequency generator is clearly expressed in the claims and does not need to be clarified in a construction. For example, Claim 56 of the ’061 Patent (reexam) provides: “a clock frequency generator receiving a clock frequency from the clock frequency source.” Claim 1 of the ’627 Patent provides: “a frequency generator configured to receive a first clock signal from a clock generator.” Claim 3 of the ’247 Patent provides: “supplying a clock signal to the frequency generator using a clock generator.”

Accordingly, the Court rejects Defendant’s “external” construction for “clock frequency source” and “clock generator.” The Court hereby holds that the terms “clock frequency source” and “clock generator” have their plain and ordinary meaning without the need for construction. The Court also construes the Frequency-Generator Terms as follows:

• “clock frequency generator” means “clock frequency generator on the same chip as the processor”;

• “programmable frequency generator” means “programmable frequency generator on the same chip as the processor”; and

• “frequency generator” means “frequency generator on the same chip as the processor.”

Case No. 2:18-cv-00192

Semcon IP v. Amazon.com, Inc.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

Claim Construction F

The Parties’ Positions

Plaintiff submits: As the Court held in Huawei, the meaning of “counter” is understandable without construction. A “counter” is not necessarily a “device” nor does it necessarily “count[] to a predetermined time.” The fact that an exemplary embodiment of a counter described in the Asserted Patents counts to a predetermined time does not justify limiting “counter” in the claims to one that “counts to a predetermined time.” Dkt. No. 48 at 16–17.

In addition to the claims themselves, Plaintiff cites the following extrinsic evidence to support its position: Carbonell Decl. ¶¶ 52–53 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 21); Thornton Decl. ¶¶ 68–70 (Plaintiff’s Ex. F, Dkt. No. 48-7 at 27–29).

Defendant responds: As the Court explained in Huawei, the counter is used to control how long the clocks are disabled for a frequency change. This means the counter must count to a time. This is expressed in the claims in that the counter is started when the clocks are shut down and the clocks are restarted after the counter reaches a “specified value.” Further, this is how the described embodiments work—the counter measures a predetermined time to allow the frequency change to be effected. Finally, the “counter” limitation was added during prosecution and was recognized as a distinction over the prior art in that it counted to a predetermined time in order to restart the clocks. In contrast, a “plain and ordinary meaning” construction of “counter” could encompass things as diverse as a person who counts and a mechanical turnstile counter. Dkt. No. 50 at 18–20.

In addition to the claims themselves, Defendant cites the following intrinsic evidence to support its position: ’627 Patent figs.2, 4, col.5 ll.6–8, col.6 l.63 – col.7 l.2; ’627 Patent File Wrapper November 7, 2012 Response at 2–8 (Defendant’s Ex. E, Dkt. No. 50-6 at 3–9), November 23, 2012 Reasons for Allowance at 2 (Defendant’s Ex. G, Dkt. No. 50-8 at 7).

Plaintiff replies: Under its plain meaning in the context of the claims and the patents’ disclosure, a “counter” is neither a person who counts nor necessarily a device that counts to a predetermined time. Dkt. No. 53 at 8–9.

Analysis

The main issue in dispute is whether the counter of the Asserted Patents necessarily counts to a predetermined time. It does not.

In Huawei, the Court held that the “counter” of Claims 1, 10, and 16 of the ’627 Patent was not limited to one that “counts to time the phase-lock-loop relock process.” Huawei, 2017 U.S. Dist. LEXIS 108040, at *26–31. The Court there held that while the exemplary embodiment of a counter described in the ’627 Patent “is utilized to measure the time allowed for the PLL circuitry to lock to the new frequency,” the counter of the invention was not defined as one that necessarily “counts to time the phase-lock-loop relock process.” Id. at *28 (quoting ’627 Patent at col.6 ll.63–66). The Court reiterates that holding here.

The counter counts, but it does not necessarily count to a predetermined time. As described above with respect to the shutting-down-the-clocks-in-response-to-a-frequency-change-initiation terms, Claims 1, 10, and 16 recite that the shut-down clocks are “turned on” or “restarted” when a counter reaches a specified value. In Claims 1 and 10, the “processing unit” reenables the clocks “in response to the counter reaching a certain value.” Claim 16 states simply, “in response to said counter reaching a specified value, restarting said first and second clock signals.” While the restart of the clocks in each of these claims is tied to the counter reaching some predetermined value, the counter does not necessarily count to this predetermined value nor is the predetermined value necessarily a “time.” The counter of Claim 10 is expressly tied to a time: the “value” that triggers turning on the clocks is “a value corresponding to an amount of time allowed for phase-locked-loop (PLL) circuitry to lock in response to a change in frequency of said first clock signal.” The clock-restart values of Claims 1 and 16 are not expressly tied to a time. That the restart value is expressly tied to a time in one claim and not others suggests that it is not inherently a time. None of the claims require that the counter count to the value, only that once it reaches the value, the clocks are restarted. Not even the counter of the described embodiment is limited to counting to a predetermined time. Rather, it is simply “utilized to measure the time.” ’061 Patent col.6 l.61 – col.7 l.5. In fact, the patents describe that the “relock time” is stored in the “master register” and the “sequencer” restarts that clock once this period has “passed.” Id. This suggests that the clock-restart counter may count higher than the relock time and that something other than the counter may determine if the counter has reached the predetermined value. The patents also describe another counter, the “time stamp counter,” which “keep[s] track of world clock values,” suggesting that a “counter” is not inherently a device that counts to a predetermined time. Id. at col.7 ll.6–25. Ultimately, the counter of the claims does not necessarily count to a predetermined time.

While the Court does not perceive any real risk that a party or an expert may present a person or a mechanical turnstile counter as a counter of the claims, or that a jury might misunderstand the counter of the claims to encompass a person or a mechanical turnstile counter and thereby reach an incorrect conclusion on infringement or invalidity, Defendant has raised this as a dispute. The “counter” of the Asserted Patents and of the claims of the ’627 Patent is not a person or a mechanical turnstile counter. In the context of the patents, the plain meaning of “counter” is a unit, whether hardware or software, that counts.

Accordingly, the Court hereby construes “counter” to mean “hardware or software that counts.”

Case No. 2:18-cv-00192

Semcon IP v. Amazon.com, Inc.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

Claim Construction E

The Parties’ Positions

Plaintiff submits: The specific operating conditions listed in Defendant’s proposed construction are exemplary conditions described in the Asserted Patents. As exemplary embodiments, they should not be read into the claims. Dkt. No. 48 at 16.

In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’061 Patent col.5 ll.21–29. Extrinsic evidence: Carbonell Decl. ¶¶ 47–50 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 19–20).

Defendant responds: The operating conditions or characteristics of the claims are limited to those described in the Asserted Patents: operating frequency, operating voltage, operating temperature, and time the processor spends in an idle state. Specifically, the conditions do not include “instructions to be executed by the processor.” Such instructions were disclaimed as operating conditions during prosecution of the ’061 Patent. A “plain meaning” construction threatens to improperly allow operating conditions or characteristics to encompass instructions to be executed. Dkt. No. 50 at 16–18.

In addition to the claims themselves, Defendant cites the following intrinsic evidence to support its position: ’061 Patent col.2 l.67 – col.3 l.12; ’061 Patent File Wrapper September 8, 2008 Reply to Action Closing Prosecution in Inter Partes Reexamination at 2 (Defendant’s Ex. D, Dkt. No. 50-5 at 7).

Plaintiff replies: The patentee did not disclaim instructions to be executed from the scope of operating conditions. Rather, the patentee amended certain claims to include that a determination is made “independently of instructions to be executed by the processor.” This means that “instructions to be executed” are actually within the scope of “operating conditions,” else there would have been no need to amend the claims. Dkt. No. 53 at 8.

Analysis

There are two issues in dispute. First, whether the recited operating “conditions,” “characteristics,” and “parameters” of the processor are limited to those listed in the Asserted Patents. They are not. Second, whether the recited operating “conditions,” “characteristics,” and “parameters” of the processor necessarily excludes “instructions to be executed by the processor.” They do not.

The Asserted Patents’ list of operating conditions, namely, “the present frequency and voltage of operation, the temperature of operation, the amount of time the processor spends in one of what may be a number of idle states in which various components of the system are quiescent,” ’061 Patent col.5 ll.23–28, is not exhaustive. “[V]oltage and frequency monitoring” is expressly exemplary, id. at col.3 ll.2–5 (using “such as” to introduce voltage and frequency monitoring), as is monitoring of “temperature data.” Id. at col.3 ll.5–9 (using “e.g.” to introduce temperature data). Other exemplary condition monitoring includes “detecting other operations of the system including commands to be executed from which a particular type of operation to be executed may be determined.” Id. at col.3 ll.9–12 (using “including” to introduce a list of other operations detected). The patents also refer to “various operating characteristics” with reference to U.S. Patent App. No. 09/417,930. Id. at col.3 ll.12–15. Further, the patents disclose monitoring “various conditions of the processor that relate to power expenditure by the processor” which “may include …the amount of time the processor spends in one of what may be a number of idle states in which various components of the system are quiescent.” Id. at col.5 ll.21–28. Relatedly, the patents mention ramping up the frequency and voltage for a “short time,” suggesting the time of overclocking may also be an operating condition that is monitored. See id. at col.7 ll.45–58; Carbonell Decl. ¶ 49, Dkt. No. 48-6 at 20. Ultimately, the listed operating conditions/characteristics/parameters are not exhaustive as Defendant suggests.

Except as expressly provided in the claims, the “instructions to be executed by the” processor/processing device condition is not excluded from the claimed operating conditions/characteristics/parameters. Claim 1 of the ’247 Patent recites: “determining a level of permitted power consumption by a processing device from a set of operating conditions of the processing device, with the determining the level of permitted power consumption not based upon instructions to be executed by the processing device.” This expressly states that the “instructions to be executed by the processing device” are not part of the “operating conditions” used in “the determining [a] level of permitted power.” This suggests that “operating conditions” does not inherently exclude “instructions to be executed by the processing device.” Further, amending Claim 1 during prosecution of the ’061 Patent reexamination to expressly remove “instructions to be executed by the processor” from the conditions used in determining a reduced maximum power consumption level is not a broad disclaimer of “instructions to be executed by the” processor/processing device from the scope of “operating conditions” regardless of the role of those conditions in a claim.

Accordingly, the Court rejects Defendant’s proposal to limit the terms to “the present frequency and voltage of operation of the processor, the temperature of operation of the processor, or the amount of time the processor spends in one of what may be a number of idle states” and to necessarily exclude “instructions to be executed by the processor.” The Court hereby holds that the Operating-Conditions terms have their plain and ordinary meanings without the need for further construction.

Case No. 2:18-cv-00192