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Semcon IP v., Inc.


Claim Construction M

The Parties’ Positions

Plaintiff submits: Processors are operable at certain frequency and voltage settings, as published in product data sheets. Outside of these settings, the processor cannot function. Further, the “nominal” setting is the normal setting for the operating conditions, as stated on the product data sheets. This is known to the person of ordinary skill in the art. Dkt. No. 48 at 25–26.

In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’708 Patent col.5 ll.26–29, col.5 ll.36–39. Extrinsic evidence: Carbonell Decl. ¶¶ 67, 73–75 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 26–29).

Defendant responds: The Asserted Patents provide no guidance regarding what makes a processor not capable of functioning or even what level of dysfunction rises to not functioning. Further, there is no indication in the patents that a processor product data sheet specifies parameters at which the processor is not able to function. Rather, the patents teach that it is possible to run the processor outside the recommended levels. Thus, there is no way to determine what is means for a processor to be unable to function. Dkt. No. 50 at 31–32.

In addition to the claims themselves, Defendant cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’708 Patent figs.2, 4 col.4 l.58 – col.5 l.18, col.5 l.42 – col.7 l.24, col.7 ll.32–52. Extrinsic evidence: Thornton Decl. ¶ 97 (Defendant’s Ex. H, Dkt. No. 50-9 at 38).

Plaintiff replies: Defendant’s position fails to account for the information available to persons of ordinary skill in the art; namely, product data sheets. In the context of this information, whether a processor can function at specified frequency and voltage pairings is reasonably certain. Dkt. No. 53 at 13.


The issue is whether what it means that a processor is not capable of functioning or cannot function is reasonably certain to one of ordinary skill in the art. It is.

These terms are related to the frequency and voltage pairings for operating a processor. For example, Claim 1 of the ’708 Patent provides that the “processor is not capable of functioning at said first frequency and said second voltage.” Claim 26 of the patent provides that the “processing unit can not function at said second frequency and said first voltage.” The Asserted Patents describe:

  • The power consumed by a CMOS integrated circuit is given approximately by P=CV2f, where C is the active switching capacitance, V is the supply voltage, and f is the frequency of operation. The maximum allowable frequency is described by fmax=kV, where k is a constant.

  • It is desirable to operate the processor at the lowest possible voltage at a frequency that provides the computing power desired by the user at any given moment.

’061 Patent col.1 ll.42–50.

That is, the patents explain that there is a maximum frequency allowable for a given processor voltage. “If the frequency is to be increased, it is first necessary that the voltage be increased to allow the processor to function at a higher frequency. In such a case, it is first necessary to increase the voltage level of operation.” Id. at col.6 ll.2–6. That is, if the frequency is increased beyond that allowed by the voltage, the processor will be unable to function—it is not capable of functioning, it can not function. In the context of the patents, this is shown by the relationship between maximum allowable frequency and voltage: fmax=kV. Ultimately, whether a particular processor is unable to function at a particular voltage-frequency pairing is a factual issue.

Accordingly, Defendant has not proven any claim is indefinite for including the “is not capable of functioning” or “can not function.” The Court holds that the “Is Not Capable of Functioning”and “Can Not Function” Terms have their plain and ordinary meaning without the need for further construction.

Case No. 2:18-cv-00192

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