Comparison to Judge Wares Vs PAUL S. GREWAL (CLAIM TERM CONSTRUCTION)

CLAIM TERM CONSTRUCTION

“instruction register”
Register that receives and holds one or more instructions for supplying to circuits that interpret the instructions
“ring oscillator”
an oscillator having a multiple, odd number of inversions arranged in a loop, wherein the oscillator is variable based on the temperature, voltage and process parameters in the environment
“separate DMA CPU”
a central processing unit that accesses memory and that fetches and executes instructions directly and separately of the main central processing unit
“supply the multiple sequential instructions”
provide the multiple sequential instructions in parallel (as opposed to one-by-one) to said central processing unit integrated circuit during
1 Unless otherwise noted, the docket citations refer to Case No. 5:08-cv-00882 PSG.
2 See Docket Nos. 387, 394.
3 See Docket Nos. 385, 388.
4 See Docket No. 403.
Case5:08-cv-00882-PSG Document410 Filed12/04/12 Page2 of 3
Case No.: 08-0877
United States District Court
For the Northern District of California
a single memory cycle
“clocking said CPU”
Providing a timing signal to said central processing unit
The parties should rest assured that the court arrived at these constructions with a full appreciation of not only the relevant intrinsic and extrinsic evidence, but also the Federal Circuit’s teaching in Phillips v. AWH Corp.,5 and its progeny. So that the parties may pursue whatever recourse they believe is necessary, a complete opinion will issue before entry of any judgment.

IT IS SO ORDERED.

Dated: December 4, 2012

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

JAMES WARE
United States District Chief Judge

C. ‘336 Patent
1. Claim 1
Claim 1 of the ‘336 Patent provides:
A microprocessor system, comprising
a single integrated circuit including a central processing unit
and an entire ring oscillator variable speed system clock in said
single integrated circuit and connected to said central processing unit
for clocking said central processing unit,
said central processing unit and said ring oscillator variable
speed system clock each including a plurality of electronic devices
correspondingly constructed of the same process technology with
corresponding manufacturing variations,
a processing frequency capability of said central processing
unit and a speed of said ring oscillator variable speed system clock
varying together due to said manufacturing variations and due to at
least operating voltage and temperature of said single integrated
circuit;
an on-chip input/output interface connected to exchange
coupling control signals, addresses and data with said central
processing unit; and
a second clock independent of said ring oscillator variable
speed system clock connected to said input/output interface, wherein a
clock signal of said second clock originates from a source other than
said ring oscillator variable speed system clock.
The parties tender the phrase “ring oscillator” for construction.
Upon review, the Court finds that one of ordinary skill in the art would understand the phrase
“ring oscillator” to mean: “interconnected electronic components comprising multiple odd numbers
of inverters arranged in a loop.”30 When a voltage is applied, the ring oscillator generates signals
that are used by the processing unit to regulate the timing of its operations. In contrast with a circuit
31 Because the ‘148 Patent shares the same specification with the ‘336 Patent and is directly
related to the other three Patents-in-Suit, the Court finds that any representation regarding similar
terms made by the inventors during the prosecution of the ‘148 Patent is relevant to its consideration
and construction of the terms in the ‘336 Patent. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357
F.3d 1340, 1350 (Fed. Cir. 2004) (“Any statement of the patentee in the prosecution of a related
application as to the scope of the invention would be relevant to claim construction.”).
32 (See Otteson Decl., Ex. X, Ex Parte Reexamination Interview Summary, Docket Item No.
310-2.)
14
that receives its timing signal from an external clock, a person of ordinary skill in the art reading the
patent would understand that Claim 1 claims a “single integrated circuit,” fabricated so as to include
a “ring oscillator.”
At issue is whether the phrase “ring oscillator” should be given a specialized meaning based
on statements made by the inventors during reexamination of Claims 4 and 8 of the ‘148 Patent.31
Claim 4 of the ‘148 Patent claims in pertinent part:
A microprocessor integrated circuit comprising . . . a ring oscillator
having a variable output frequency, wherein the ring oscillator
provides a system clock to the processing unit, the ring oscillator
disposed on said integrated circuit substrate.
Claim 8 of the ‘148 Patent has a similarly worded limitation.
During reexamination, the examiner reviewed the allowance of Claims 4 and 8 over U.S.
Patent No. 4,689,581 (“Talbot”). The Talbot Patent, which is entitled “Integrated Circuit Phase
Locked Loop Timing Apparatus,” claims:
an integrated circuit device . . . and a timing apparatus . . . formed on a
common single chip, said timing apparatus comprising a phase locked
loop [comprising, inter alia] a voltage controlled oscillator arranged to
be controlled by [a] voltage signal to produce [an] output timing signal
at its output.
(Talbot, Col. 10:48-11:9.)
Preliminarily, the examiner rejected Claims 4 and 8 of the ‘148 Patent as unpatentable over
Talbot. During the course of reexamination proceedings, the examiner conducted an interview with
the patent owner and discussed whether Claims 4 and 8 were allowable over Talbot.32 Afterward,
33 An examiner’s interview summary may serve as a basis for finding a prosecution
disclaimer that narrows the claim scope. See, e.g., Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1322
(Fed. Cir. 2002); Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297, 1302-04 (Fed. Cir.
2001).
34 (See Chen Decl., Ex. 4, Ex Parte Reexamination Interview Summary, Docket Item No.
316-4 (emphasis added).)
35 (Otteson Decl., Ex. Y, Remarks/Arguments at 11, hereafter, “Remarks,” Docket Item No.
310-3.)
36 For instance, Defendants argued during the Markman hearing that the inventors’ written
submission distinguished the Talbot reference because Talbot lacked a ring oscillator and never
mentioned a requirement of “non-controllability.” Further, Defendants also refer to the inventors’
written response on February 21, 2008, which states:
Further, Talbot does not teach, disclose, or suggest the ring oscillator recited in claim 4.
... Talbot discusses a voltage-controlled oscillator (VCO) 12, but does not teach or disclose
a ring oscillator. Talbot provides two different implementations of the VCO 12 in FIGS. 3-
4, neither one of which is a ring oscillator. Talbot refers to the oscillator of FIG. 3 as a
“frequency controlled oscillator” (col. 7, ll. 21-22) and the oscillator of FIG. 4 simply as a
“voltage controlled oscillator” (col. 8, ll. 59-65). As the sole inventor of the cited reference,
15
the examiner prepared and sent to the patent owner an “Interview Summary.”33 Specifically, with
respect to the discussion of Talbot, the examiner wrote:
Continuing, the patent owner further argued that the reference of Talbot does
not teach of a “ring oscillator.” The patent owner discussed features of a ring
oscillator, such as being non-controllable, and being variable based on the
environment. The patent owner argued that these features distinguish
over what Talbot teaches. The examiner will reconsider the current
rejection based on a forthcoming response, which will include arguments
similar to what was discussed.34
In its post-interview submission, the patent owner reiterated the contention that the claim
should be allowed because Talbot disclosed a “voltage-controlled oscillator” and not the “ring
oscillator” disclosed in the claim:
Further, Talbot does not teach, disclose, or suggest the ring oscillator
recited in claim 4. The Examiner cited col. 3, ll. 26-36, and oscillator
circuit 12 shown in FIG. 1 of Talbot as teaching the recited ring
oscillator. Talbot discusses a voltage-controlled oscillator (VCO) 12,
but does not teach or disclose a ring oscillator.35
During the course of these claim construction proceedings, the inventors have continued to
maintain that Talbot was overcome during reexamination because it does not disclose a “ring
oscillator.”36
Talbot presumably possesses at least ordinary skill in the art, yet Talbot did not characterize
either of the disclosed oscillators as ring oscillators. Applicants respectfully assert that the
reason they were not characterized by Talbot as ring oscillators is because they are not ring
oscillators. For at least the foregoing reasons, Talbot does not teach, disclose, or suggest a
ring oscillator as recited in the claims. (Remarks at 11 (emphases added).)
37 This issue is important to claim construction, because it is relevant to understanding in
what manner the ring oscillator is “non-controllable,” as distinguished from the voltage-controlled
oscillator disclosed in Talbot. Resolving this conflict might affect how the Court approaches issues
with respect to the validity of the patent claim at issue.
16
The Court has examined the Talbot patent. Although the component is, indeed, referred to as
a “voltage-controlled oscillator,” declarations and other extrinsic materials that have been tendered
during the claim construction proceedings call into question the validity of the inventors’ contention
to the PTO and to this Court that the “ring oscillator” is different from the “voltage-controlled
oscillator” disclosed in Talbot. On the one hand, the Court has received extrinsic evidence that the
voltage-controlled oscillator disclosed in Talbot is a ring oscillator. On the other hand, arguments
have been submitted claiming that the voltage-controlled oscillator of Talbot is not a ring
oscillator.37
Under clear Federal Circuit law, a submission made by an inventor during reexamination is
regarded as a disavowal only if the court finds that the allegedly disavowing statement is “so clear as
to show reasonable clarity and deliberateness, and so unmistakable as to show unambiguous
evidence of disclaimer.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)
(citations omitted).
Here, before arriving at a decision on the definition of the phrase “ring oscillator” in the
context of the Talbot reference, the Court finds that it would benefit from further briefing. In the
supplement briefs, the declarants shall fully articulate the technical basis for their opinions with
respect to whether the voltage-controlled oscillator disclosed in Talbot is or is not a ring oscillator.
The Court will return to the construction of the phrase “ring oscillator” following the completion of
the supplement briefing.
38 (See ‘336 Patent, Col. 16:67-17:2 (stating that “[b]y deriving system timing from the ring
oscillator 430, CPU 70 will always execute at the maximum frequency possible, but never too
fast.”).)
17
2. Claim 6
Claim 6 of the ‘336 Patent provides:
A microprocessor system comprising:
a central processing unit disposed upon an integrated circuit
substrate, said central processing unit operating at a processing
frequency and being constructed of a first plurality of electronic
devices;
an entire oscillator disposed upon said integrated circuit
substrate and connected to said central processing unit, said oscillator
clocking said central processing unit at a clock rate and being
constructed of a second plurality of electronic devices, thus varying
the processing frequency of said first plurality of electronic devices
and the clock rate of said second plurality of electronic devices in the
same way as a function of parameter variation in one or more
fabrication or operational parameters associated with said integrated
circuit substrate, thereby enabling said processing frequency to track
said clock rate in response to said parameter variation; an on-chip
input/output interface, connected between said central processing unit
and an off-chip external memory bus, for facilitating exchanging
coupling control signals, addresses and data with said central
processing unit; and
an off-chip external clock, independent of said oscillator,
connected to said input/output interface wherein said off-chip external
clock is operative at a frequency independent of a clock frequency of
said oscillator and wherein a clock signal from said off-chip external
clock originates from a source other than said oscillator.
a. “clocking said central processing unit”
The parties tender for construction the phrase “clocking said central processing unit.”
Upon review, the Court finds that to one of ordinary skill in the art, the plain and ordinary
meaning of “clocking said central processing unit” is to provide a clock signal to the central
processing unit.
A further issue tendered with respect to this phrase is whether, based on the written
description, the construction should include a limitation of the maximum or optimum frequency of
the “clocking” function. In the written description of the ‘336 Patent, the phrase “maximum
frequency possible” is used with respect to an embodiment.38 A description of an embodiment in the
specification may not be imposed as a limitation “unless the patentee has demonstrated a clear
39 The Court observes that “function” is a very broad term. See, e.g., MODERN DICTIONARY
OF ELECTRONICS 311-12 (7th ed. 1999) (defining “function” as, inter alia, a “quantity of value that
depends on the value of one or more other quantities” or a “specific purpose of an entity, or its
characteristic action,” and defining a number of phrases that include the term “function,” such as
“function codes,” “function keys” and a “function table”).
18
intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’”
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004)
(citation omitted). Here, the Court finds that the cited language does not demonstrate “a clear
intention to limit the claim scope.” Id.
Accordingly, the Court construes “clocking said central processing unit” to mean:
providing a timing signal to said central processing unit.
b. “as a function of parameter variation”
The parties tender for construction the phrase “as a function of parameter variation.” The
full phrase is: “thus varying the processing frequency of said first plurality of electronic devices and
the clock rate of said second plurality of electronic devices in the same way as a function of
parameter variation.”
The disputed issue is whether the phrase requires a mathematical type predetermined
functional relationship. Upon review, the Court finds that a person of ordinary skill in the art
reading the patent would understand that the phrase “as a function of” is describing a variable that
depends on and varies with another.39 Because neither the written description nor the prosecution
history provide a basis for concluding that the phrase should be limited to a narrower definition of an
exact mathematical type functional relationship, the Court declines to do so. Having resolved the
only dispute tendered with respect to this phrase, the Court declines to construe it further.
3. Claim 10
Claim 10 of the ‘336 Patent provides:
In a microprocessor system including a central processing unit, a
method for clocking said central processing unit comprising the steps
of:
providing said central processing unit upon an integrated
circuit substrate, said central processing unit being constructed of a
first plurality of transistors and being operative at a processing
frequency;
providing an entire variable speed clock disposed upon said
integrated circuit substrate, said variable speed clock being
constructed of a second plurality of transistors;
clocking said central processing unit at a clock rate using said
variable speed clock with said central processing unit being clocked
by said variable speed clock at a variable frequency dependent upon
variation in one or more fabrication or operational parameters
associated with said integrated circuit substrate, said processing
frequency and said clock rate varying in the same way relative to said
variation in said one or more fabrication or operational parameters
associated with said integrated circuit substrate;
connecting an on-chip input/output interface between said
central processing unit and an off-chip external memory bus, and
exchanging coupling control signals, addresses and data between said
input/output interface and said central processing unit; and
clocking said input/output interface using an off-chip external
clock wherein said off-chip external clock is operative at a frequency
independent of a clock frequency of said variable speed clock and
wherein a clock signal from said off-chip external clock originates
from a source other than said variable speed clock.
The parties have tendered for construction the phrase “providing an entire variable speed
clock disposed upon said integrated circuit substrate.” There are two issues that are tendered with
respect to this language. First, there is a dispute over whether the “variable speed clock” should be
defined as limited to a ring oscillator. Here, the Court observes that, in other claims, the inventor
discusses a “ring oscillator” as a variable speed system clock. Nonetheless, with respect to this
Claim, the Court declines to limit the broader phrase found in Claim 10 to a ring oscillator only.
Second, the parties tender a dispute over the degree of independence between the signal of
the “variable speed clock” and any external reference signal. However, upon review the Court finds
that this dispute is not pertinent to the construction of the tendered phrase.
Accordingly, the Court construes “providing an entire variable speed clock disposed upon
said integrated circuit substrate” to mean:
Providing a variable speed clock that is located entirely on the same
semiconductor substrate as the central processing unit.
4. Claim 11
Claim 11 of the ‘336 Patent provides:
A microprocessor system, comprising a single integrated circuit
including a central processing unit and an entire ring oscillator
variable speed system clock in said single integrated circuit and
connected to said central processing unit for clocking said central
processing unit, said central processing unit and said ring oscillator
variable speed system clock each including a plurality of electronic
devices correspondingly constructed of the same process technology
with corresponding manufacturing variations, a processing frequency
capability of said central processing unit and a speed of said ring
oscillator variable speed system clock varying together due to said
manufacturing variations and due to at least operating voltage and
temperature of said single integrated circuit; an on-chip input/output
interface connected to exchange coupling control signals, addresses
and data with said central processing unit; and a second clock
independent of said ring oscillator variable speed system clock
connected to said input/output interface, wherein said central
processing unit operates asynchronously to said input/output
interface.
The parties tender for construction the phrase “wherein said central processing unit operates
asynchronously to said input/output interface.”
Claim 11 discloses a microprocessor system comprising, among others, a central processing
unit and an entire ring oscillator variable speed system clock connected to said central processing
unit, an on-chip input/output interface, and “a second clock independent of said ring oscillator
variable speed system clock” connected to said input/output interface. The subject phrase is
contained in a “wherein” clause that describes the relationship between the timing control signal of
the central processing unit and the timing signal of the on-chip input/output interface. The claim
discloses that the central processing unit operates “asynchronously” to the input/output interface.
The written description is silent as to whether there is or can be any timing relationship
between the central processing unit and the input/output interface or between their respective clocks.
The inventors first introduced the term “operates asynchronously to” during the
re-examination of the ‘336 Patent in order to “clarify the meaning of ‘independent’ as recited in the
40 (See Declaration of Eugene Mar in Support of Defendants’ Opening Claim Construction
Brief, Ex. G, In re Ex Parte Reexamination of U.S. Patent No. 5,809,336 at 17, Docket Item No.
213-2.)
41 (Id. (citing STEPHEN A.WARD & ROBERT H. HALSTEAD, JR., COMPUTATION STRUCTURES
93 (1990)) (emphasis added).)
42 One source provides nine different meanings for the term “asychronous.” See MODERN
DICTIONARY OF ELECTRONICS 40 (7th ed. 1999) (defining the term, inter alia, as a “communication
method in which data is sent when it is ready without being referenced to a timing clock, rather than
waiting until the receiver signals that it is ready to receive” or as referring to “computer program
execution [that is] unexpected or unpredictable with respect to the instruction sequence”).
21
claims.”40 The examiner had focused on a reference known as “Kato” that purported to show two
clock signals that are “in synchronism with each other.” (Id. at 19.) The inventors explained that
“Kato does not reveal any teaching that any of the components of the data processing circuit operate
asynchronously with each other.” (Id.) In support of the “independent” and “asynchronous” nature
of its clocks, the inventors cited a textbook that describes what an asynchronous system is:
An asynchronous system is one containing two or more independent clock signals.
So long as each clock drives independent logic circuitry, such a system is effectively
a collection of independent synchronous systems. The logical combination of
signals derived from independent clocks, however, poses difficulty because of the
unpredictability of their phase relationship.41
Reading this prosecution history, a person of ordinary skill would understand that the word
“asynchronously”42 means that the timing signal from one clock is independent from and not derived
from the other clock such that a phase relationship between the two clocks is not readily predictable.
Accordingly, the Court construes “wherein said central processing unit operates
asynchronously to said input/output interface” to mean:
the timing control of the central processing unit operates independently of and is
not derived from the timing control of the input/output interface such that there
is no readily predictable phase relationship between them.
IV. CONCLUSION
The Court has construed the phrases and terms tendered for construction.
On or before June 29, 2012, the parties shall meet and confer and file a Joint Statement
addressing the following issues:
43 On April 28, 2012, Chief Judge Ware announced that he plans to “retire in August 2012 as
the terms of his current law clerks come to an end.” See Chief Judge Ware Announces Transition,
available at http://www.cand.uscourts.gov/news/82.
22
(1) A proposed schedule for supplemental briefs consistent with the terms of this Order;
(2) In light of the Court’s impending retirement,43 the Court proposes to assign this case
to Magistrate Judge Grewal. In their Statement, the parties shall state whether they
jointly consent to having this case immediately reassigned to Judge Grewal. In the
event the parties do not consent to the immediate reassignment, the case will remain
with Judge Ware and be subject to reassignment in due course.
Dated: June 12, 2012