New Pacer--SUPPLEMENTAL JOINT CLAIM CONSTRUCTION AND PREHEARING
STATEMENT UNDER PATENT LOCAL RULE 4-3

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
ACER, INC., ACER AMERICA
CORPORATION and GATEWAY, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES
LIMITED, PATRIOT SCIENTIFIC
CORPORATION, and ALLIACENSE
LIMITED,
Defendants.
HTC CORPORATION, HTC AMERICA,
INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES
LIMITED, PATRIOT SCIENTIFIC
CORPORATION, and ALLIACENSE
LIMITED,
Defendants.
BARCO N.V., a Belgian corporation,
Plaintiff,
v.
TECHNOLOGY PROPERTIES LTD.,
PATRIOT SCIENTIFIC CORP.,
ALLIACENSE LTD.,
Defendants.

SUPPLEMENTAL JOINT CLAIM CONSTRUCTION AND PREHEARING
STATEMENT UNDER PATENT LOCAL RULE 4-3

The parties from all three above-captioned related actions, Plaintiffs Acer Inc., Acer
America Corp., and Gateway, Inc. (collectively “Acer”), HTC Corporation and HTC America
Inc. (collectively “HTC”) and Barco, N.V. (“Barco”), and Defendants Technology Properties
Limited (“TPL”), Patriot Scientific Corporation, and Alliacense Limited (collectively
“Defendants”), hereby submit this Supplemental Joint Claim Construction and Prehearing
Statement under Patent Local Rule 4-3 (“Supplemental Statement”).
The parties filed their original Patent Local Rule 4-3 Joint Claim Construction and
Prehearing Statement on October 29, 2010 (“Original Statement”). Doc. No. 203 Acer et al. v.
TPL et al., 5:08-cv-877 JF/HRL. Subsequently, claims in two of the four patents-in-suit, U.S.
Patent Nos. 5,440,749 (the “’749 patent”) and 5,530,890 (the “’890 patent”), were amended and
added during reexamination proceedings. The Defendants then moved to amend their
infringement contentions to address the amended and the additional claims, which the Court
granted-in-part and denied-in-part on May 13, 2011. During a case management conference held
on June 24, 2011, the Court modified the briefing schedule based upon the parties’ stipulation to
allow time to address the amended infringement contentions before the claim construction
hearing scheduled for November 14, 2011. Under the modified schedule, the parties met and
conferred on additional claim terms for construction in light of the amended infringement
contentions, and hereby submit this Supplemental Statement under Patent Local Rule 4-3.
I. AGREED CLAIM CONSTRUCTION
The parties agreed that “ring counter” shall mean “ring oscillator.”
II. DISPUTED CLAIM CONSTRUCTIONS
A list of the additionally disputed claim terms from the ’749 patent and the ’890 patent,
the respective constructions proposed by each side, and the supporting intrinsic and extrinsic
evidence for the constructions is attached as Exhibit A.
The parties recognize that one of the disputed claim terms, “operation of said
input/output interface asynchronously from said central processing unit,” above is closely
related to another disputed term, “operates asynchronously to,” (Joint Claim Construction
Statement, Ex. B, No. 29), which was previously addressed in the original Joint Claims
Construction Statement and in the subsequent claim construction briefs that have been filed
with the Court. The dispute over that term, “operates asynchronously to,” is whether the
phrase means “operates without a timing relationship to/with” (as proposed by the Plaintiffs) or
“timed by independent clock signals” (as proposed by the Defendants). To avoid duplicative
briefing and to promote judicial economy, the parties agree that if the Court construes the
phrase “operates asynchronously to” (Jt. Claim Const. Stmt., Ex. B, No. 29) to mean “operates
without a timing relationship to/with,” then Plaintiffs’ proposed construction for “operation of
said input/output interface asynchronously from said central processing unit” in Exhibit A
applies. Conversely, if the Court construes the phrase, “operates asynchronously to,” to mean
“timed by independent clock signals,” then Defendants’ proposed construction for “operation
of said input/output interface asynchronously from said central processing unit” applies.
III. IDENTIFICATION OF MOST SIGNIFICANT CLAIM TERMS
[APPLICABLE TO BARCO v. TPL ACTION ONLY]
The Acer v. TPL and HTC v. TPL actions were filed in February 2008 and thus operate
under the version of the Patent Local Rules published in December 2000. The requirement that
the parties identify the ten most significant claim terms, therefore, applies only to the Barco
action. The parties in Barco v. TPL hereby agree that the following:
1. “Push down stack connected to said ALU”
2. “Supply the multiple sequential instructions to said central processing unit
integrated circuit during a single memory cycle”
3. “Multiple sequential instructions”
4. “Instruction register”
5. “Separate direct memory access central processing unit”
6. “Ring oscillator”
7. “Clocking said CPU”
8. “External clock”
9. “As a function of parameter variation”
10. “Operates asynchronously to”
The parties further agree that the Court’s construction of “connected to” within Term 1
above, will apply in the same manner to Rows 3, 8, 9, 15, and 16, as numbered in Exhibit B
attached to the parties’ Patent Local Rule 4-3 Joint Claim Construction Statement (or “JCCS”),
filed on October 29, 2010.
IV. ANTICIPATED LENGTH OF CLAIM CONSTRUCTION HEARING
The positions of Plaintiffs Acer, Barco and HTC and Defendants are set forth below.
Plaintiff’s Position:
Plaintiffs believe that oral argument on claim construction should take three hours for the
tutorials (an hour and thirty minutes each side) and four hours (two hours each side) for the claim
construction arguments, for all disputed terms as to all three related actions. Because the patentsin-
suit derive from a common specification, and because several terms are shared between more
than one patent, many of the individually disputed terms will present questions of claim
construction in common with other terms, and many terms involve similar conceptual positions
by each party.
Plaintiffs disagree that claim construction should be limited to 10 terms decided by parties
pursuant to a Local Rule that does not apply to the Acer and HTC actions. There are four patents
at issue in the Acer and HTC actions, with 35 claims asserted against Acer and 31 against HTC.
The number of disputed terms reflects the unusually large number of asserted claims, as well as
the fact that the asserted claims are longer and more complicated than in typical patent cases
(many of them independent claims) containing numerous technical terms whose meanings are
disputed. Moreover, several of the disputed terms are drafted in means-plus-function format and
thus require construction. Plaintiffs Acer and HTC believe that the number of disputed terms
could be substantially reduced if Defendants were limited in the number of claims asserted.
Hence, in addition to the 10 agreed-upon terms, Plaintiffs propose that the following three
parallel, case-dispositive terms be construed together in light of the new disclaimers made by
Defendants during the reexamination proceedings that occurred after Judge Ward’s construction:
 “An entire ring oscillator variable speed system clock in said single integrated
circuit” (Row 23 of Exhibit B in the JCCS);
- 4 - 23129\2722676.1
 “An entire oscillator disposed upon said integrated circuit substrate” (Row 19);
and
 “Providing an entire variable speed clock disposed upon said integrated circuit
substrate” (Row 28).1
As explained in the parties’ respective claim construction briefing, the single embodiment
in the patents-in-suit discloses an on-chip “ring oscillator” that acts as a variable speed system
clock for the CPU. This single disclosure of “ring oscillator” (Row 22) (an agreed-upon term for
construction in Part I) is the specification support for Rows 23, 19 and 28 quoted above. After
Judge Ward’s claim construction ruling, Defendants distinguished prior art during reexamination
proceedings by expressly representing to the Examiner that the disclosed and claimed “ring
oscillator” is “non-controllable” and “variable based on the environment.” See Interview
Summary, 2/12/08, Control No. 90/008,227.
Based on Defendants’ express disclaimer, Plaintiffs argue in their consolidated claim
construction brief that the oscillator or clock in each of Rows 23, 19 and 28 be limited, inter alia,
as “non-controllable” and “variable based on the voltage, temperature and process parameters in
the environment.” Defendants oppose this limitation, but in their claim construction briefs
Defendants do not differentiate among Rows 23, 19 and 28 based on the differences in their claim
language. The parties’ positions for Rows 22, 23, 19 and 28 are set forth in the table below (with
differences shown in boldface and strikeouts):
Claim term Plaintiffs’ Construction Defendants’ Construction
Ring oscillator
(Row 22)
(An Agreed-
Upon Term for
Construction in
Part I)
An oscillator having a multiple, odd
number of inversions arranged in a
loop,
wherein the oscillator is: (1) noncontrollable;
and (2) variable based
on the temperature, voltage, and
process parameters in the
An oscillator having a multiple, odd
number of inversions arranged in a
loop
1 Because Rows 23, 19 and 28 have similar language and raise the same claim construction
disputes, Plaintiffs had proposed during meet-and-confer that only Row 23 be construed, but its
construction would control the constructions of Rows 19 and 28. Row 23 was suggested as
representative because it includes practically all of the disputed language. However, Defendants’
position, articulated below, that the differences in language affect the claim construction issues
appears to require that all three rows be construed.
Claim term Plaintiffs’ Construction Defendants’ Construction
environment
An entire ring
oscillator
variable speed
system clock in
said single
integrated
circuit
(Row 23)
A ring oscillator variable speed
system clock
that is located entirely on the same
semiconductor substrate as the CPU
and does not directly rely on a
command input control signal or an
external crystal/clock generator to
generate a clock signal,
wherein the ring oscillator variable
speed system clock is: (1) noncontrollable;
and (2) variable based
on the temperature, voltage, and
process parameters in the
environment
A ring oscillator variable speed
system clock
that is located entirely on the same
semiconductor substrate as the CPU
and does not directly rely on a
command input control signal or an
external crystal/clock generator to
generate a clock signal
An entire
oscillator
disposed upon
said integrated
circuit
substrate
(Row 19)
An oscillator
that is located entirely on the same
semiconductor substrate as the CPU
and does not directly rely on a
command input control signal or an
external crystal/clock generator to
generate a clock signal,
wherein the oscillator is: (1) noncontrollable;
and (2) variable based
on the temperature, voltage, and
process parameters in the
environment
An oscillator
that is located entirely on the same
semiconductor substrate as the CPU
and does not directly rely on a
command input control signal or an
external crystal/clock generator to
generate a clock signal
Providing an
entire variable
speed clock
disposed upon
said integrated
circuit
substrate
(Row 28)
Providing a variable speed system
clock
that is located entirely on the same
semiconductor substrate as the CPU
and does not directly rely on a
command input control signal or an
external crystal/clock generator to
generate a clock signal,
wherein the variable speed clock is:
(1) non-controllable; and (2)
variable based on the temperature,
voltage, and process parameters in
the environment
Providing a variable speed system
clock
that is located entirely on the same
semiconductor substrate as the CPU
and does not directly rely on a
command input control signal or an
external crystal/clock generator to
generate a clock signal
///
Case5:08-cv-05398-JF Document210 Filed08/23/11 Page6 of 13
Farella Braun + Martel LLP
235 Montgomery Street, 17th Floor
San Francisco, CA 94104
(The chart above shows that, despite the differences in claim language, each side has
respectively proposed parallel constructions for Rows 23, 19 and 28 with common limitations.2
In their claim construction briefs, Defendants never even suggested the possibility of different
limitations for Rows 23, 19 and 28 based on their different claim language.
But below, Defendants now take the new position that the differences in claim language
among these rows (i.e., “ring oscillator variable speed system clock” versus “oscillator” or
“variable speed clock”) affect the disputed common limitations. By belatedly relying on the
differences in the claim language, Defendants now raise the possibility that each of the three
terms has a different meaning. For that reason, the construction of all three is required, though
Plaintiffs believe the differences in their claim language are not significant to the disputed
common limitations and that the common arguments will be determinative for all three.
Defendants are proposing below that Rows 23, 19 and 28 be left completely unconstrued,
even as to the dispute over whether the claimed “entire” ring oscillator variable speed system
clock/oscillator/variable speed clock “directly rel[ies] on a command input control signal or an
external crystal/clock generator to generate a clock signal.” But rather than explain why Rows
19, 23 and 28 do not require any construction, Defendants’ position below includes elaborate
claim construction arguments respecting Rows 19, 23 and 28 that are not found in their claim
construction briefs. Ironically, Defendants’ new claim construction arguments merely highlight
the importance of construing Rows 19, 23 and 28 together, although this joint statement is not the
place for Plaintiffs to respond to Defendants’ new arguments.
Given the disputes apparent from both the table above and Defendants’ new arguments
below, Defendants’ position appears intended to stymie the Court’s consideration of whether
Defendants’ disclaimers made to the USPTO apply to these parallel terms as proposed by the
Plaintiffs in their claim construction brief. Plaintiffs believe that Rows 19, 23 and 28 need to be
construed together in light of Defendants’ disclaimers to properly resolve the claim construction
2 During meet-and-confer, Defendants proposed that Row 19, “an entire oscillator . . . ,” be
construed, and Row 23 and 28 have constructions parallel to Row 19. Hence, at least during
meet-and-confer, it appeared that there was no dispute that Rows 19, 23 and 28 should have
parallel constructions with common limitations.
disputes on these claim phrases.
In addition, Plaintiffs believe that the Court should construe the first two disputed terms
(Nos. 1 and 2) in Exhibit A resulting from Defendants’ amendments to their infringement
contentions as presented in Section II above in this paper, because they are potentially casedispositive
for the amended and new claims.3 The total number of terms that should be construed
is thus 15.
Other than the 10 agreed-upon terms for construction, Defendants propose to construe
additionally the term “push down stack.” Since the parties have already agreed to construe “push
down stack connected to said ALU,” Plaintiffs believe it is unnecessary to separately construe the
term “push down stack.” As discussed above, Plaintiffs believe it is more important to construe
the “ring oscillator”-related terms of Rows 19, 23 and 28, which are case-dispositive. To keep the
total number of claim terms being construed as close to 12 as possible, Plaintiffs believe a
construction of the term “push down stack connected to said ALU” is sufficient.
Defendants’ Position:
A. Narrowing The Terms To Be Construed. Plaintiffs’ suggestion that the Court
should construe every one of the 32 disputed terms across four patents in the three related actions,
and that the tutorial for such an undertaking would require only three hours for all seven parties,
and the oral argument for claim construction only four hours, is unreasonable and impractical.
While the Patent Local Rule requiring the parties to identify the ten most significant claim terms
does not apply to Acer and HTC, common sense and judicial efficiency suggest that in these
cases, as in all patent cases, not all claim terms are case dispositive. The Court may properly
direct the parties to focus just on the most significant claim terms, as Judge Fogel did. In the
April 28, 2011 Joint Statement Requesting Order On Claim Terms To Be Construed, Doc. 199,
Barco v. TPL et al., Case 5:08 cv-05398-JF, the parties jointly identified the ten most significant
claim terms, and Plaintiffs proposed an additional three terms, as they are again doing in this
3 The third term, “operation of said input/output interface asynchronously from said central
processing unit,” does not need to be construed or argued separately because its construction will
turn on the construction of the word, “asynchronously,” already included in the term, “operates
asynchronously.”
Supplemental Joint Claims Construction Statement.
Having met and conferred on the additional claim terms asserted as a result of the
reexamination process, Plaintiffs now seek to add two more terms to the list of terms for
construction, for a total of 15. Defendants did not believe the additional two terms required
construction in the first instance, and certainly do not consider them to be case dispositive. As
discussed more fully below, Defendants propose that the Court construe the ten terms set out
above, and limit the oral argument at the Markman hearing to those ten terms.
B. Timing and Order of Presentation for Markman Hearing. Defendants agree that
one court day should suffice for both a technology tutorial and oral arguments on claim
construction, unless the oral argument is to include all thirty-two disputed claim terms, in which
case an additional four hours of argument (two hours per side) will be needed. The allocation of
time between the technology tutorial and oral argument will depend on the Court’s preference and
its familiarity with microprocessor technology. Defendants believe that as the patent holders,
Defendants should present first in the tutorial and Markman hearing.
C. Remaining Dispute on Terms For Construction. Defendants believe that
construction of the ten terms set forth above is sufficient, and comports with the local rules
limiting construction of claim terms to ten. Having already declined Plaintiffs’ invitation to
stipulate that the construction of “ring oscillator” apply to “the entire oscillator . . .” and “variable
speed clock,” Defendants do not agree that an additional three claim phrases (Rows 19, 23, and
28) should be construed in the spirit of “parallel” terms with undefined “common limitations.”4
Defendants made clear that the construction of these terms would vary based on the different
claim elements as demonstrated by the unique claim language of each claim term, as shown
above. Defendants’ proposed claim constructions for these terms have always recognized the
4 Defendants offered to have the construction of Row 19 apply to Rows 23 and 28 for the limited
issue of “[t]he main dispute in Row 19[, which] is whether an oscillator located entirely on the
same semiconductor substrate as the CPU does not directly rely on a command input control
signal, or merely does not rely on a control signal. Defendants would be willing to stipulate that
the construction of Row 19 on this issue will apply to Row 28, as well as to Row 23.” Email
from N. Joesten to K. Chen, Apr. 4, 2011 (emphasis added) (attached as Ex. A to Declaration of
Nan E. Joesten).
distinction presented by the claim language,5 in addition to opposing Plaintiffs’ attempt to
improperly limit all of these claims to having a clock that is non-controllable and variable based
on the environment.
Contrary to Plaintiffs’ assertion, Defendants never made a disclaimer during the
reexamination proceedings related to “an entire ring oscillator variable speed system clock in said
single integrated circuit.” Instead, Plaintiffs are fixating on the examiner’s summary of an
interview during the reexamination of U.S. Patent No. 6,598,148 (“the ‘148 patent”). However,
the term at issue for construction, “an entire ring oscillator variable speed system clock in said
single integrated circuit,” is not even in the claims of the ‘148 patent.
Nevertheless, that Plaintiffs have only belatedly recognized the distinctions between
various claim terms does not justify adding what is effectively five additional terms for
construction at this point. Until April 21, 2011, Plaintiffs and Defendants had agreed on the
construction of eleven terms, including “push down stack” as a stand alone term, and “push down
stack connected to said ALU,” where the dispute at issue would be limited to the construction of
“connected to . . ..” Defendants are willing to eliminate “push down stack” from the list of terms
to be construed, but that change does not reduce the actual terms which the Court must construe,
as “push down stack” remains within the term “push down stack connected to said ALU.”
Furthermore, each of Rows 19, 23, and 28 contain not only the dispute as to the limitations
relating to the claimed ring oscillator, oscillator, or variable speed system clock, but also whether
the claimed “entire” variable speed clock “directly rel[ies] on a command input control signal or
an external crystal/clock generator to generate a clock signal.” Notably, Plaintiffs prefer to add
additional terms for construction, rather than narrow the list to the most critical terms in dispute.
V. WITNESSES FOR THE CLAIM CONSTRUCTION HEARING
Plaintiff’s Position:
Plaintiffs do not plan to call witnesses to testify live at the claim construction hearing, but
5 The doctrine of claim differentiation dictates that different claims with different language have
different meaning, and should not be inferred to have the same construction because of some
misguided notion of “parallel terms.”
will have Acer’s and HTC’s expert witnesses, Dr. Andrew Wolfe and Dr. David May,
respectively, available should the Court believe that such testimony would be useful in resolving
the disputed terms between the parties. Acer and HTC may submit declarations from Dr. Wolfe
and/or Dr. May to rebut Defendants’ expert declarations, if included in their opening brief to be
filed on October 7, 2011 under the current schedule.
Defendants’ Position:
Defendants do not plan to call any witnesses to testify live at the claim construction
hearing.
VI. PREHEARING CONFERENCE
The parties believe that a prehearing conference would be helpful in assisting the parties
to understand the Court’s requirements for the tutorial and the Markman hearing.
Respectfully submitted,
[SIGNATURE BLOCKS ON NEXT PAGE]
Dated: August 23, 2011 FARELLA BRAUN + MARTEL LLP
By: /s/
John L. Cooper
Farella Braun + Martel LLP
235 Montgomery Street
San Francisco, CA 94104
Attorneys for Technology Properties Ltd.
and Alliacense Ltd.
Dated: August 23, 2011 KIRBY NOONAN LANCE & HOGE LLP
By: /s/
Charles T. Hoge, Esq.
Kirby Noonan Lance & Hoge LLP
350 Tenth Avenue
Suite 1300
San Diego, CA 92101
Attorneys for Patriot Scientific Corp.
Dated: August 23, 2011 BAKER & MCKENZIE LLP
By: /s/
Edward K. Runyan, Esq.
Baker & McKenzie
130 East Randolph Drive
Chicago, IL 60601
Attorneys for Barco, N.V.
Dated: August 23, 2011 COOLEY LLP
By: /s/
Kyle D. Chen, Esq.
Heidi L. Keefe, Esq.
Mark R. Weinstein, Esq.
Cooley Godward Kronish LLP
3000 El Camino Real
Five Palo Alto Square, 4th Floor
Palo Alto, California 94306
Attorneys for HTC Corporation and HTC
America, Inc.
Dated: August 23, 2011 K&L GATES LLP
By: /s/
Timothy P. Walker, Esq.
Harold H. Davis, Jr., Esq.
Jas Dhillon, Esq.
Jeffrey M. Ratinoff
K&L Gates LLP
Four Embarcadero Center, Suite 1200
San Francisco, CA 94111
Attorneys for Acer, Inc., Acer