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(Counsel listed on signature page)

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Case No. 3:12-cv-03865-VC (PSG)

PLAINITIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

v.

HUAWEI TECHNOLOGIES CO., LTD., HUAWEI DEVICE CO., LTD., HUAWEI DEVICE USA INC., FUTUREWEI TECHNOLOGIES, INC., HUAWEI TECHNOLOGIES USA INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs,

v.

GARMIN LTD., GARMIN INTERNATIONAL, INC., and GARMIN USA, INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs,

v.

ZTE CORPORATION and ZTE (USA) INC.,

Defendants.

Case No. 3:12-cv-03870-VC (PSG)

Plaintiffs,

Case No. 3:12-cv-03876-VC (PSG)

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs,

v.

SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Case No. 3:12-cv-03880-VC (PSG)

LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,

Defendants.

TECHNOLOGY PROPERTIES LIMITED LLC, et al.,

Plaintiffs,

v.

NINTENDO CO., LTD. and NINTENDO OF AMERICA, INC.,

Defendants.

Case No. 3:12-cv-03881-VC (PSG)

Plaintiffs,

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

ii

TABLE OF CONTENTS

I. INTRODUCTION .......................................................................................... 1

II. FACTUAL BACKGROUND ......................................................................... 1

III. APPLICABLE LAW ...................................................................................... 5

IV. ARGUMENT .................................................................................................. 6

A. Plaintiffs’ construction gives meaning to the claim language and is consistent with the Court’s prior claim constructions .......................... 7

B. Defendants’ construction improperly adds negative limitations and is inconsistent with the Court’s prior constructions................................. 8

V. CONCLUSION ............................................................................................. 12

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

Sealant Systems Intern., Inc. v. TEK Global S.R.L.,

Cases

3M Innovative Props. Co. v. Avery Dennison Corp.,

350 F.3d 1365, 1373 (Fed. Cir. 2003).................................................................. 6

Cordis Corp. v. Medtronic AVE, Inc.,

511 F.3d 1157, 1177 (Fed Cir. 2008)................................................................... 5

Hill-Rom Servs. v. Stryker Corp.,

755 F.3d 1367, 1373 (Fed. Cir. 2014).................................................................. 5

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,

381 F.3d 1111, 1124 (Fed. Cir. 2004).................................................................. 6

Omega Eng’g, Inc. v. Raytek Corp.,

334 F.3d 1314, 1325 (Fed. Cir. 2003)............................................................ 5, 11

Salazar v. Procter & Gamble Co.,

414 F.3d 1342, 1347 (Fed. Cir. 2005).................................................................. 6

Thorner v. Sony,

669 F.3d 1362, 1367 (Fed. Cir. 2012).................................................................. 5

Univ. of Pittsburgh of Commonwealth Sys. of Higher Educ. v. Hedrick,

573 F.3d 1290, 1296-97 (Fed. Cir. 2009) ............................................................ 6

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I. INTRODUCTION

The sole phrase for claim construction is one the Court knows well – “an entire oscillator disposed upon said integrated circuit substrate.”1 Defendants’ construction represents yet another

attempt build a non-infringement position through misconstruing the prosecution history

regarding the entire oscillator phrase. These same efforts have been previously rejected by this

Court and other tribunals. As set forth below, this Court should adopt Plaintiffs’ construction of

the entire oscillator phrase, which is in accordance with the Court’s previous construction and

provides Plaintiffs the correct scope of the claims bargained for at the patent office.

II. FACTUAL BACKGROUND

The issues presented in this briefing have a lengthy history, much of which has unfolded in this Court. For the better part of a decade, parties have been arguing in various forums whether the term entire oscillator allows for the use of an external crystal or clock generator as a reference signal. These specific issues have been presented to this Court no fewer than four times, and each time this Court has held that the intrinsic record permits the use of an external crystal or clock generator as a reference signal and has rejected defendants’ attempts to include unwarranted negative limitations in the entire oscillator construction. In June 2007, a related phrase, “an entire ring oscillator variable speed system clock in said integrated circuit,” was construed by the United States District Court for the Eastern District of Texas. See Ex. A to Declaration of Barry J. Bumgardner,2 Technology Properties Ltd. et al. v. Matsushita Elec. Indus. Co., Ltd., et al., No. 2:05-cv-494, Dkt. No. 259 (E.D. Tex., June 15, 2007) (the “Texas Markman Order”). In the Texas proceeding, the court analyzed the intrinsic record presently cited by Defendants in this case and found that the term meant “a ring oscillatorvariable 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

The entire oscillator term appears in claims 6 and 13 of U.S. Patent No. 5,809,336 and is the only term in dispute

for the ‘’336 Patent. The parties recently dismissed each other’s claims involving the two other patents previously at 27 issue in these cases: U.S. Patent Nos. 5,440,749 and 5,530,890. See, e.g., Technology Properties Ltd. v. Samsung

Electronics Co., Ltd., No. 3:12-cv-03877, Dkt. 91.

Hereinafter referred to as “Bumgardner Decl.”

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generator to generate a clock signal.” Id. at 11-12 (emphasis added). The court in Texas specifically considered (i) whether the prosecution history prohibited the use of a crystal or external clock, or whether the external clock could be used as a reference, and (ii) whether the prosecution history prohibited the use of control signals such as voltage and current control signals, or the more narrow “command input control signals.” Id. The Texas court found that an external crystal/clock generator could not be used for generating a clock signal, but left open the possible use of an external crystal/clock generator for a reference signal. The Texas Markman Order specifically rejected defendant Matsushita’s proposed construction that the “ring oscillator” could not “rely on a control signal or an external crystal/clock generator.” Instead, the court adopted a narrower limitation which excluded “direct” reliance on “command input control signals” from the scope of the claim term. Lastly, the Texas court construed the term “ring oscillator” to mean “an oscillator having a multiple, odd number of inversions arranged in a loop.” Id. at 11.

In 2012, Judge Ware of this District considered the phrase “entire ring oscillator variable speed system clock.” See Bumgardner Decl. Ex. B, HTC Corp. v. Technology Properties Ltd., et al., No. 3:08-cv-882, Dkt. No. 364 at 13-16 (N.D. Cal., June 12, 2012)3 (the “Ware Markman Order”). In this proceeding, HTC, like the prior defendants in Texas, took the position that the “ring oscillator” could not “rely on a control signal or an external crystal/clock generator to generate a clock signal” and that the speed of the “oscillator” was “non-controllable.” See, e.g., Id. and Bumgardner Decl. Ex. C, HTC, Dkt. No. 339 at 25 (TPL’s Opening Claim Construction Brief).

Judge Ware evaluated the parties’ respective positions and discussed the plain and ordinary meaning of a ring oscillator. Ware Markman Order at 13. Other than to state that “a person of ordinary skill in the art reading the patent would understand that Claim 1 claims a ‘single integrate circuit,’ fabricated so as to include a ‘ring oscillator’”, Judge Ware declined to further construe the entire ring oscillator variable speed clock without receiving additional briefing regarding statements made during prosecution. Ware Markman Order at 16. In other Subsequent citations to HTC Corp. v. Technology Properties Ltd., et al. will be made as “HTC Case.”

words, the exacting standard for showing disavowal had not been met and the Court asked to hear more. Judge Ware ordered the supplemental briefing, subsequently retired, and the HTC matter was transferred to Judge Grewal. In the supplemental briefing, the parties continued to debate the meaning of the ring oscillator. The supplemental briefing generally covered the disputed elements of ring oscillator rather than the meaning of the word entire. After evaluating the parties’ positions and the prosecution history, Judge Grewal held that while the frequency of the ring oscillator is determined by the temperature, voltage, and process, the prosecution history of the patent did not “impose a prohibition on all types of control.” Bumgardner Decl. Ex. D, HTC, Dkt. No. 509 (August 21, 2013 - Claim Construction Order) (the “Grewal Markman Order”). Thus, Judge Grewal declined to include “non-controllable” in the construction or to prohibit reliance on an external crystal oscillator in the construction of the term. Meanwhile, at the ITC, an administrative law judge considered the meaning of ring oscillator and entire oscillator in a proceeding involving all of the Defendants to the present case. In the ITC, the Defendants advocated that the term ring oscillator could “not rely on a control signal or an external crystal/clock generator to generate a clock signal.” See Bumgardner Decl. Ex. E, Commission Investigative Staff’s Initial Markman Brief, Investigation No. 337-TA-853 at 7 (February 8, 2013). As in the Grewal Markman Order, the ITC ultimately held that the ring oscillator need not be “non-controllable” because there was no clear and unmistakable disavowal

20 in the prosecution history. See Bumgardner Decl. Ex. F, Investigation No. 337-TA-853, Order

21 No. 31, Construing the Terms of the Asserted Claims of the Patent at Issue at 18 (Apr. 18, 2013)

(the “ITC Markman Order”). The ITC Markman Order further declined to add the temperature,

voltage and process limitation because such limitations were already found in the claims. Id.

The ITC did continue address the meaning of entire by construing the term an entire ring

oscillator variable speed system clock in said single integrated circuit. Here, the ALJ disagreed

with Judge Ward’s construction. The ITC held that the term meant “a ring oscillator variable

speed system clock that is located entirely on the same semiconductor substrate as the central

processing unit and does not rely on a control signal or an external crystal/clock generator to

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generate a clock signal.” ITC Markman Order at 40 (emphasis added). This construction differed from Judge Ward’s prior construction in that it modified the previous prohibition against relying on a “command input control signal” to be a prohibition against relying on a “control signal.” The construction also removed the word directly before rely. After the ITC ruling, HTC moved for summary judgement in its district court case. See Bumgardner Decl. Ex. G, HTC, Dkt. No. 457 (Plaintiffs’ Motion for Summary Judgment of Non-Infringement). HTC argued that the entire portion of the entire oscillator term meant that there could be no involvement whatsoever of an external crystal in the function of the oscillator. The Court denied HTC’s motion. Bumgardner Decl. Ex. H, HTC, Dkt. No. 585 at 11 (Summary Judgment Order). While the Court did agree that, as a result of prosecution history, the claims exclude “any external clock used to generate a signal” the Court recognized that there was some actual dispute as to whether the clock is generated on the chip and relies on the PLL (and, thus, the external crystal) to merely “buffer or fix” the frequency. Id. The Court called this a “classic factual question that requires a trial to answer.” Id.

After the Court entered the HTC Summary Judgment Order, HTC moved on an emergency basis to attempt to again capture additional claim limitations in the jury instructions. Bumgardner Decl. Ex. I, HTC, Dkt. No. 590 (HTC Emergency Motion). TPL and Patriotopposed. Bumgardner Decl. Ex. J, HTC, Dkt. No. 596, (TPL Response to Emergency Motion). Specifically, HTC asked the Court to modify the jury instructions to indicate that (1) the entire oscillator term (and its kin) “are not satisfied by an accused system that uses any external clock to generate a signal” and (2) “an accused product can only infringe the ’336 Patent if that product contains an on-chip oscillator or clock that is (a) self-generating and (b) does not rely on an input control to determine its frequency.” Ex. I at 2. The Court held that the jury would be instructed that the term entire oscillator and its kin are properly understood to “exclude any external clock used to generate a signal,” but once again declined to add a restriction with respect to control of the oscillator. Bumgardner Decl. Ex. K, HTC, Dkt. No. 607, (Emergency Motion Order) (emphasis added).

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After trial, the Court considered a JMOL by HTC which once again touched on the issue of the entire oscillator. In its order denying HTC’s JMOL, the Court explained that in considering HTC’s emergency motion regarding jury instructions, the Court specifically considered HTC’s request for additional claim construction and explained that the Emergency Motion Order modified the “external clock to generate a signal” language, while denying the self-generating/input control language. Bumgardner Decl. Ex. L, HTC, Dkt. No. 707 at 8-9 (Order Denying JMOL). The Court’s JMOL Order demonstrated the Court’s acute understanding of how the PLLs involved in the accused HTC products are used to regulate, not generate the ring oscillator’s frequency. Id. at 11. The entire oscillator issue is once again before this Court, as Defendants in this suit make yet another attempt to include some of the same negative limitations in the entire oscillator construction that have been previously rejected.

III. APPLICABLE LAW

Sealant Systems Intern., Inc. v. TEK Global S.R.L., 2012 WL 3763794 at *1, (N.D. Cal. 2012)

(“Seven years after the Federal Circuit's seminal Phillips decision, the cannons of claim construction are now well-known even if not perfectly understood by parties and courts alike.”) However, the below discussion regarding disclaimer may be useful.

As Judge Ware observed in the Ware Markman Order, before a submission made by a patentee during reexamination can be regarded as a disavowal, the court must find “the allegedly disavowing statement is ‘so clear as to show reasonable clarity and deliberateness, and so unmistakable as to show unambiguous evidence of disclaimer.’” Ware Markman Order at quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003) (citationsomitted). Stated another way, the “disavowal” doctrine only applies where a disavowal is “clear and unmistakable.” See Cordis Corp. v. Medtronic AVE, Inc., 511 F.3d 1157, 1177 (Fed Cir. 2008) (“alleged disavowing actions or statements made during prosecution [must] be both clear and unmistakable”). See also Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1373 (Fed. Cir. 2014) (“Disavowal requires that "the specification [or prosecution history] make[] clear that the

This Court is well-versed in the general principles applicable to claim construction.

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1 invention does not include a particular feature,”) (brackets in original); Thorner v. Sony, 669 F.3d

2 1362, 1367 (Fed. Cir. 2012) (stating that “the standard for disavowal of claim scope is []

3 exacting”).

4 Additionally, the alleged disavowal must be made by the patentee, not the examiner.

5 Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) (“unilateral statements

6 by an examiner do not give rise to a clear disavowal of claim scope by an applicant,” as “the

7 applicant has disavowed nothing”); Univ. of Pittsburgh of Commonwealth Sys. of Higher Educ. v.

8 Hedrick, 573 F.3d 1290, 1296-97 (Fed. Cir. 2009) (“a wide chasm exists between the weak

9 inference from the [interview] summary . . . and a clear and unmistakable disavowal as required

10 to limit a claim term”). As the Federal Circuit has recognized, “[p]rosecution history ... cannot

11 be used to limit the scope of a claim unless the applicant took a position before the PTO.” 3M

12 Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2003) (emphasis

13 added). The reason for requiring the disclaimer to come from the applicant rather than the

14 examiner is the recognition that sometimes the examiner and applicant are talking past one

15 another. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1124

16 (Fed. Cir. 2004) (where an “examiner and applicant [are] talking past one another” and “the

17 record finally reflects the examiner’s acquiescence to the claim language chosen by the applicant,

18 [t]his is not clear evidence of the patentee’s disavowal of claim scope”).

19 IV. ARGUMENT

20 The parties agree to the meaning of the term oscillator. Bumgardner Decl. Ex. M, Joint

21 Claim Construction and Prehearing Statement, Ex. A - Agreed Terms, Technology Properties

22 Ltd., et al. v. Samsung Electronics Co., Ltd. et al., No. 3:12-cv-0877, Dkt. No. 72-1 at 5. The

23 parties also agree to the meaning of ring oscillator, and other descriptions of the oscillator, such

24 as the oscillator . . . clocking. Id. The sole dispute is whether the entire oscillator term should

25 include narrowing limitations that this Court has previously rejected. The disputed language

26 proposed by Defendants is italicized below:

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A. Plaintiffs’ construction gives meaning to the claim language and is consistent with the Court’s prior claim constructions.

Plaintiffs’ construction utilizes the parties’ agreed constructions of oscillator and CPU, and is the same as Defendants’ construction except for the negative limitations Defendants seek to improperly include (discussed below). As an initial matter, the parties agree that an oscillator is a “circuit capable of maintaining an alternating output.” The claim language at issue merely requires that the entire oscillator be “disposed upon said integrated circuit substrate.” Plaintiffs’ construction gives meaning to the claim language by requiring that the oscillator be “located entirely on the same semiconductor substrate as the [CPU].” Defendants do not dispute this part of Plaintiffs’ construction.

As to the function of the entire oscillator, the claim requires that “said oscillator clocking said [CPU] at a clock rate . . . .” The parties are in agreement that (1) “clocking said [CPU]” means “providing a timing signal to said [CPU]; and (2) “oscillator ... clocking” means “oscillator that generates the signal(s) used for timing the operation of the [CPU].” Thus, there is no dispute as to the function of the entire oscillator and its role in the claimed invention.

Plaintiffs’ construction is also consistent with the Court’s prior treatment of the phrase in the HTC case. Notably, the Court in the HTC case issued a jury instruction that the entire oscillator “exclude[s] any external clock used to generate the signal used to clock the CPU.” See Bumgardner Decl. Ex. N, HTC, Dkt. No. 646 at 26 (Jury Instructions). Plaintiffs’ construction is entirely consistent with this instruction because (i) Plaintiffs’ construction of the entire oscillator already requires the oscillator to be “located entirely on the same semiconductor substrate as the [CPU]” and (ii) other, undisputed claim language already requires “said oscillator clocking said

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Term

Plaintiffs’ Construction

Defendants’ Construction

an entire oscillator disposed upon said integrated circuit substrate

An [oscillator] that is located entirely on the same semiconductor substrate as the [central processing unit].

An [oscillator] that is located entirely on the same semiconductor substrate as the [central processing unit] and does not rely on a control signal or an external crystal/clock generator to cause clock signal oscillation or control clock signal frequency.

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[CPU] at a clock rate.” See ‘336 Patent, Claim 6. Thus, Plaintiff’s construction, when read in

2 conjunction with the claim as a whole, already makes clear that an external clock may not

3 generate the signal used to clock the CPU.

4 B. Defendants’ construction improperly adds negative limitations and is

5 inconsistent with the Court’s prior constructions.

6 Defendants’ construction improperly adds the negative limitations that the oscillator “not

7 rely on a control signal or an external crystal/clock generator to cause clock signal oscillation or

8 control clock signal frequency.” Adoption of this negative limitation would be a major departure

9 from the Court’s prior treatment of the entire oscillator phrase and must be rejected for several

10 reasons.

11 A comparison of Defendants’ proposed construction to that proffered previously by HTC

12 is illustrative of Defendants attempt to read an even broader (in certain aspects) disclaimer in to

the entire oscillator term. upon said integrated circuit substrate” but the nature and importance of the arguments is the same.

Term

HTC’s Proposed Construction4

Defendants’ Construction

an entire oscillator disposed upon said integrated circuit substrate

A ring oscillator variable speed system clock that is located entirely on the same semiconductor substrate as the CPU and does not rely on a control signal or an external crystal/clock generator to generate a clock signal, wherein the ring oscillator variable speed system clock is: (1) non- controllable; 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 [central processing unit] and does not rely on a control signal or an external crystal/clock generator to cause clock signal oscillation or control clock signal frequency.

Both HTC and Defendants include the phrase “does not rely on a control signal or an external crystal/clock generator” in their constructions. HTC’s construction goes on to limit the reliance on the actual generation of the clock signal (“to generate a clock signal”). Defendants,

4 HTC’s proposed construction corresponds to “providing an entire variable speed clock disposed

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1 on the other hand, broaden this concept using the term “cause” (“to cause clock signal

2 oscillation”). Plaintiffs’ respectfully submit that the concept of “causation” is significantly

3 broader than the concept of “generation” as put forward by HTC. A common legal test for

4 causation is the “but for” test. The test simply asks, “but for the existence of X, would Y have

5 occurred?” If the answer is yes, then factor X is an actual cause of result Y. Under this type of

6 analysis, any one of a number of control signals unrelated to the generation of a clock signal

7 could possibly be found to “cause clock signal oscillation.” For example, a general reset signal

8 that is asserted on power-on and that holds many systems in a non-active state for some period of

9 time could be a “control signal . . . that cause[s] clock signal oscillation” under Defendants’

10 construction. Likewise, a signal that causes power to be applied to the clocking systems could be

11 found to “cause clock signal oscillation or control clock signal frequency.” Such concepts are far

12 removed from the intrinsic record of the ‘336 Patent and are but one reason why Defendants’

13 construction should be rejected.

14 Turning now to other aspects of Defendants’ proposed construction, with respect to the

15 external crystal/clock generator, the Defendants now propose that the entire oscillator cannot

16 “rely” on those elements to “cause clock signal oscillation or control clock signal frequency.”

17 This is an unabashed attempt to exclude scenarios where an external crystal is used as a reference

18 signal. Nothing in the prosecution history supports such a restriction. Presumably the

19 Defendants will cite to the prosecution history surrounding Magar (U.S. Patent No. 4,503,500),

20 arguing that the patentees disclaimed all use of an external crystal. But that characterization is

21 incorrect. Magar relied upon an external crystal to generate the actual clock signal used by the

22 CPU. As the Court is aware, such an argument is distinct from using an external crystal or clock

23 generator as a reference to adjust the frequency of an already existing clock signal. See, e.g., Ex.

24 L at 10-11.

25 With respect to external control, Defendants now attempt to claim that the entire oscillator

26 cannot rely on a control signal to cause clock signal oscillation or control clock signal frequency.

27 The only potential support for such a limitation, however, is another strained and incorrect

28 reading of the prosecution history. In years of prosecution and re-examination, the patentees did

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1 not state that the oscillator could not be subject to any form of control. Instead, for example, in

2 distinguishing the ’336 Patent invention from U.S. Patent No. 4,670,837 (“Sheets”), the patentees

3 pointed out that by placing the clock and the CPU on the same integrated circuit, the ’336 patent:

distinguished their invention from the prior art by pointing out that, unlike the prior art, the

oscillator or variable speed clock in their invention varies in frequency (i.e., is not fixed, fo

example, like an external crystal) and does not require external frequency control. Defendants’

unsupported effort to expand this distinction beyond its clear meaning to impose a prohibition of

any form of control should be rejected as unsupported and without merit. See Ex. D, HTC

Markman Order at 10 (analyzing similar language in the file history).

limitations of the claim scope. A review of the prosecution history reveals that the only reference

to “non-controllability” is inclusion of the single word “non-controllable” in a summary of an

interview prepared by the examiner. Bumgardner Decl., Ex. P, U.S. Patent No. 6,598,148 Patent,

Reexamination File History, Interview Summary at 4 (February 12, 2008).5 In the short, three-

sentence summary of the discussion of Talbot, the examiner provided no explanation regarding

the meaning of the word. Moreover, rather than relying on “non-controllability,” the examiner

specifically stated he would “reconsider the current rejection [premised on Talbot] based on a

forthcoming response” from the patent owner. Within 8 days of the interview (dated February

21, 2008, though filed February 26, 2008) TPL submitted the promised written response.

Bumgardner Decl., Ex. Q, ‘148 Patent, Reexamination File History, Remarks/Arguments,

(February 21, 2008). This written response explained that Talbot was distinguishable because

“Talbot does not teach, disclose, or suggest the ring oscillator recited in claim 4.” Id. at 11.

28 5 U.S. Patent No. 6,598,148 (the “’148 Patent”) shares a common specification with the ‘336 Patent and contains similar claim limitations.

obviates the need for provision of the type of frequency control information described by Sheets.

Bumgardner Decl., Ex. O, ’336 Patent, File History, Response to Office Action at 8 (April 15, 1996) (emphasis added). The ’336 Patent prosecution history demonstrates that the patentees

Furthermore, with respect to Talbot (U.S. Patent No. 4,689,581), the statements in the prosecution history do not amount to disavowal because they are not clear and unmistakable

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1 Nowhere – and in no way – did TPL adopt the examiner’s reference to “non-controllability.”

2 TPL, in fact, made no reference to that word at all.

3 Importantly, TPL acknowledged that “Talbot discusses a voltage-controlled oscillator

4 (VCO).” Id. After that acknowledgment, TPL did not point to that feature as distinguishing

5 Talbot from the claimed invention. Instead, TPL wrote: “but, [Talbot] does not teach or disclose

6 a ring oscillator.” Id. TPL, in other words, did not exclude or disclaim voltage controlled

7 oscillators, as Defendants appear to assert; TPL, instead, pointed out that voltage controlled

8 oscillators which do not employ a ring oscillator, such as in Talbot, do not satisfy the claimed

9 “ring oscillator” limitation of the invention.

10 Of further importance, in an action dated June 25, 2008, the examiner expressly accepted

11 the arguments contained in the written response, never mentioning the interview. Specifically,

12 the examiner stated “Patent Owner’s arguments, filed 2/26/08 with respect to the rejections

13 [based on Talbot] have been fully considered and are persuasive. Therefore, the rejection ... has

14 been withdrawn.” Bumgardner Decl., Ex. R, ‘148 Patent, Reexamination History, Detailed

15 Action at 5. Thus, the examiner expressly relied on the patent owner’s written arguments to

16 overcome Talbot, and not the interview.

17 The law regarding disavowal is settled: Allegedly disavowing statements must be both

18 “so clear as to show reasonable clarity and deliberateness, and so unmistakable as to show

19 unambiguous evidence of disclaimer” for the Court to use the statement to limit the meaning of

20 claim terms. Omega Eng’g, Inc., 334 F.3d at 1325. Here, the alleged disavowing statement –

21 “non-controllable” – remains unexplained in the file history and not adopted by the patentee. The

22 term itself is ambiguous, and would require further construction. For example, the ‘336 Patent

23 discloses that the ring oscillator frequency will vary with changes in voltage. ’336 Patent, 17:21-

24 22. This disclosure indicates, therefore, that the voltage provided to the ring oscillator is not

25 fixed and can be changed or even controlled, rendering the meaning of “non-controllable”

26 ambiguous. Where the meaning of purported disavowal is not apparent, there can be no “clear

27 and unambiguous” disclaimer. On this basis alone, Defendants’ proposed limitation should be

28 rejected.

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1 The portions of the prosecution history analyzed above are merely some examples of how

2 past litigants have attempted to use the prosecution history of the’336 Patent to recast the plain

3 meaning of the entire oscillator element and to include disclaimers that do not exist. Which

4 portions of the record the current Defendants will rely upon will be clear from their claim

5 construction brief (which is being filed concurrently with this document). Accordingly, Plaintiffs

6 will conduct a thorough analysis of the specific arguments made by Defendants in their

7 Response.

8 V. CONCLUSION

9 The entire oscillator term was properly construed by this Court in the HTC case.

10 Plaintiffs recognize that Defendants were not parties to that case and have the right to make their

11 own arguments as to the meaning of entire oscillator. But, given that HTC presented a

12 construction similar to the one being proffered by Defendants and that the portions of the

13 intrinsic record noted by Defendants as being relevant to the construction of this term largely

14 overlap with those relied upon by HTC, Plaintiffs suspect that Defendants’ arguments relating to

15 the meaning of entire oscillator, and the supporting evidence, will be substantively the same. If

16 this is the case, Plaintiffs believe that this Court prior analysis was the proper one as well as the

17 resulting construction. Regardless of Defendants’ specific arguments, however, prior litigants

18 have been trying to read in negative limitations to the entire oscillator term for years and have

19 been justifiably unsuccessful. Plaintiffs respectfully submit that this lack of success is due to the

20 simple fact that the intrinsic record does not support such negative limitations. Accordingly, this

21 Court should continue to reject such attempts.

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

Case3:12-cv-03880-VC

Document109 Filed08/04/15 Page17 of 18

Dated: August 4, 2015

Respectfully submitted,

/s/ Barry J. Bumgardner____________________

NELSON BUMGARDNER, P.C.

Edward R. Nelson, III (Pro Hac Vice) [email protected]

Brent Nelson Bumgardner (Pro Hac Vice) [email protected]

Barry J. Bumgardner (Pro Hac Vice) [email protected]

Thomas Christopher Cecil (Pro Hac Vice) [email protected]

Stacie Greskowiak McNulty (Pro Hac Vice) [email protected]

John Murphy (Pro Hac Vice) [email protected]

3131 West 7th Street, Suite 300 Fort Worth, Texas 76107 [Tel.] (817) 377-9111

[Fax] (817) 377-3485

BANYS, P.C.

Christopher D. Banys (SBN 230038) [email protected]

Jennifer Lu Gilbert (SBN 255820) [email protected]

Christopher J. Judge (SBN 274418) [email protected]

Richard Cheng-hong Lin (SBN 209233) [email protected]

1032 Elwell Court, Suite 100 Palo Alto, California 94303 [Tel.] (650) 308-8505

[Fax] (650) 353-2202

ALBRITTON LAW FIRM

Eric M. Albritton (Pro Hac Vice) [email protected]

P.O. Box 2649

Longview, Texas 75606

[Tel.] (903) 757-8449 [Fax] (903) 758-7397

Attorneys for Plaintiff

PHOENIX DIGITAL SOLUTIONS LLC

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

Case3:12-cv-03880-VC

/s/ Charles T. Hoge (with permission)___________

KIRBY NOONAN LANCE & HOGE LLP

Charles T. Hoge (SBN 110696) [email protected]

350 Tenth Avenue, Suite 1300 San Diego, California 92101 [Tel.] (619) 231-8666

Attorneys for Plaintiff

PATRIOT SCIENTIFIC CORPORATION

/s/ William L. Bretschneider (with permission)____

SILICON VALLEY LAW GROUP

William L. Bretschneider (SBN 144561) [email protected]

50 W. San Fernando Street, Suite 750 San Jose, California 95113

[Tel.] (408) 573-5700 [Fax] (408) 573-5701

Attorneys for Plaintiff

TECHNOLOGY PROPERTIES LIMITED LLC

CERTIFICATE OF SERVICE

I hereby certify that, on August 4, 2015, I caused the foregoing document to be served on

counsel of record via the Court’s CM/ECF system. 18

Dated: August 4, 2015

By:

/s/ Barry J. Bumgardner Barry J. Bumgardner

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

CASE NOS. 3:12-CV-03865, 3870, 3876, 3877, 3880, 3881-VC (PSG)

14