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
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