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
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