Semcon IP Inc. v. AsusTek et. al.
CLAIM CONSTRUCTION MEMORANDUM AND ORDER
Before the Court is the opening claim construction brief of Semcon IP Inc. (“Plaintiff”) (Dkt. No. 58, filed on May 8, 2019),1 the response of Capri Holdings Ltd., Michael Kors (USA), Inc., Michael Kors Retail, Inc., and ASUSTeK Computer Inc. (collectively “Defendants”) (Dkt. No. 61, filed on May 21, 2019), and Plaintiff’s reply (Dkt. No. 63, filed on May 29, 2019). The Court held a hearing on claim construction on June 20, 2019. Having considered the arguments and evidence presented by the parties at the hearing and in their briefing, the Court issues this Order.
The issue in dispute distills to whether the patentee rescinded its prosecution-history disclaimer of an operating system. It did.
This is substantially the same issue before the Court in Huawei. 2017 U.S. Dist. LEXIS 108040, at *17–26. The Court reiterates the Huawei ruling and reasoning and rejects Defendants’ proposed construction. It is meaningful that the examiner stated that “the claim language does not require the processor determining to be performed without regards to the operating system, i.e. via processor hardware only” and the patentee did not amend the claims to address the examiner’s statement but rather added an entirely different limitation. ’061 Patent File Wrapper April 27, 2004 Office Action at 2, Dkt. No. 58-9 at 4; ’061 Patent File Wrapper July 16, 2004 Interview Summary, Dkt. No. 58-14 at 3; Huawei, 2017 U.S. Dist. LEXIS 108040, at *25–26. As there was nothing for the examiner to revisit, the patentee’s acquiescence was necessarily “sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.” Hakim v. Cannon Avent Grp., 479 F.3d 1313, 1318 (Fed. Cir. 2007).
Acquiescence to an examiner’s position does not require a formal and express statement, as Defendants contend. Springs Window Fashions LP v. Novo Indus., L.P. distinguishes a patentee’s retraction of statements it made from acquiescence to an examiner’s position that is contrary to the patentee’s position. 323 F.3d 989, 995 (Fed. Cir. 2003) (finding no rescission of disclaimer when the patentee “never retracted any of his statements distinguishing [the prior art] nor did he acquiesce in the examiner’s comments regarding the overlapping scope of [the prior art]”). Consistent with the ordinary meanings of “retract”9 and “acquiesce,”10 the Federal Circuit’s distinction suggests retraction of a position would require the expression suggested by Defendants whereas acquiescence to a contrary position may be signaled by acceptance without protest. The patentee in Springs Window did not comply with the examiner’s position without protest, but rather expressly protested, stating in addition to other patentability grounds, it “maintains the arguments set forth in the prior Amendment concerning distinguishing of [the prior art] from the claims previously presented, on the merits.” Id. at 994. That is, the Springs Window patentee did not acquiesce; instead, it protested. The patentee here reacted to the examiner’s position in a significantly different fashion. Instead of protesting the examiner’s position, it amended the claims to distinguish them from the Horden reference on other grounds. See, e.g., ’061 Patent File Wrapper July 16, 2004 Interview Summary, Dkt. No. 58-14 at 3; Huawei, 2017 U.S. Dist. LEXIS 108040, at *25–26.
Defendants also cite Desper Products, Inc. v. QSound Labs, Inc., 157 F.3d 1325 (Fed. Cir. 1998) as explicitly rejecting the efficacy of a tacit or passive rescission of a prosecution-history disclaimer, but Desper does not stand for the rule Defendants propose. Rather, Desper addressed a claim-scope argument that was explicitly accepted by the examiner. Id. at 1333–34. Specifically, in response to a rejection over a British patent, the Desper patentee amended the claims, argued the amended claims included a “limitation that the channel signals be maintained separate and apart,” and contended that “[i]n view of the amendments to the claims hereby, as well as the above arguments” the claims are “neither shown nor suggested in any of the cited references, alone or in combination.” Id. at 1334. The examiner agreed in an immediately subsequent examiner interview, indicating “that the amended claims ‘appear to distinguish over art of record in prior case (FR 1,512,059 & B 942,459).’” Id. The examiner also rejected the amended claims based on a new prior-art reference. Id. In a child application, and “after the parent application had been rejected in view of the British patent,” the Desper patentee amended the claims to include the “limitation that the channel signals be maintained separate and apart.” The related application was then rejected on a reference other than the British patent. Id. “Thus, in the file history of both patents, the limitation that the channel signals be maintained separate and apart was added to overcome the prior art rejection based on the British reference, and in both cases it succeeded.” Id. (emphasis added). That is, the examiner never took a position contrary to the Desper patentee’s position that the claims included a separate-and-apart limitation. Rather, the examiner indicated agreement with the patentee’s position. That the examiner “shifted to a different focus does not blunt the impact of those remarks made to overcome the prior rejection.” Id. at 1336.
Desper is distinguishable from the present circumstance in that the examiner here—rather than agreeing with patentee’s prosecution claim-scope arguments regarding the operating system—explicitly rejected those claim-scope arguments. In Desper, there was no contrary position to which the Desper patentee could acquiesce. Here, the patentee was presented with a direct and explicit rejection of its operating-system argument and chose to give up on that argument—it acquiesced to the examiner’s contrary position.
Ultimately, given the examiner’s statement that “the claim language does not require the processor determining to be performed without regards to the operating system, i.e. via processor hardware only,” the patentee’s failure to amend the claims to exclude the operating system, the patentee’s amendment of claims to add a different limitation, and the patentee’s failure to protest the examiner’s position on the scope of the claim language, it is sufficiently clear that the patentee acquiesced to the examiner’s position. A member of the public reading the prosecution history would see that the last statement on the operating-system argument was an explicit rejection of that argument by the agency tasked with examining the patent application. Thus, the public-notice function is served by giving effect to the patentee’s acquiescence to the examiner’s position that the claims do not exclude an operating system performing the processor determining functions.
Accordingly, the Court construes these terms as it did in Huawei and Amazon.com, as follows:
• “computer processor” means “CPU”;
• “processor” means “CPU”;
• “processing unit” means “computing portion of CPU”; and
• “processing device” means “computing portion of CPU.”
The issue in dispute is whether the meanings of these terms are reasonably certain. They are.
This is substantially the same dispute that was before the Court in Huawei. 2017 U.S. Dist. LEXIS 108040, at *52–56. The Court reiterates the Huawei ruling and reasoning and rejects Defendants’ arguments that “reducing a magnitude of a difference” renders any claim indefinite. In the context of the claims, the terms mean that operating frequency is brought closer to the highest allowable frequency and that the voltage applied to the processing device is brought closer to the lowest allowable voltage level. That is, the reducing the “magnitude” of the difference requires raising the frequency or voltage when lower than the allowable frequency or voltage (which suggests a negative difference becomes less negative, even though making a negative number less negative is increasing the value of the number) and requires lowering the frequency or voltage when lower than the allowable frequency or voltage (which suggests a positive difference becomes less positive).
Accordingly, Defendants have not proven the “reducing a magnitude of a difference” or “reducing the magnitude of the difference” terms render any claim indefinite and construes the terms as follows.
• “reducing a magnitude of a difference” means “reducing the absolute value of the difference”; and
• “reducing the magnitude of the difference” means “reducing the absolute value of the difference.”
As the parties have expressly adopted and rested on the arguments made in the claim-construction proceeding in the Amazon.com case, the Court adopts and reiterates the Amazon.com ruling and reasoning. Amazon.com, 2019 U.S. Dist. LEXIS 79846, at *21–52
Accordingly, the Court construes these voltage-change terms by construing “executing instructions” and variants in those terms in the claims at issue as follows:
• “executing … instructions” means “executing … instructions using the core clock”;
• “execution of … instructions” means “execution of … instructions using the core clock”;
• “execute instructions” means “execute instructions using the core clock”; and
• “executes … instructions” means “executes … instructions using the core clock.”
The Court adopts the constructions above for the disputed and agreed terms of the Asserted Patents. Furthermore, the parties should ensure that all testimony that relates to the terms addressed in this Order is constrained by the Court’s reasoning. However, in the presence of the jury the parties should not expressly or implicitly refer to each other’s claim construction positions and should not expressly refer to any portion of this Order that is not an actual construction adopted by the Court. The references to the claim construction process should be limited to informing the jury of the constructions adopted by the Court.
Case No. 2:18-cv-00193 (Lead Case)