25
Jan
By Eric Schweibenz
Further to our December 18, 2012 post, on January 16, 2013, ALJ David P. Shaw issued the public version of the Initial Determination (“ID”) dated December 14, 2012 in Certain Microprocessors, Components Thereof, and Products Containing Same (Inv. No. 337-TA-781).  Due to its size, we have split the ID in seven parts here: part 1, part 2, part 3, part 4, part 5, part 6, and part 7.

By way of background, the Complainant in this investigation is X2Y Attenuators, LLC (“X2Y”) and the Respondents are Intel Corporation, Componentes Intel de Costa Rica S.A., Intel Malaysia Sdn. Bhd, Intel Products (Chengdu) Ltd., Intel Products (Shanghai) Ltd. (collectively, “Intel”), Apple Inc. (“Apple”), and Hewlett-Packard Company (“HP”) (collectively, the “Respondents”).  X2Y accused Intel of importing and/or selling microprocessors and components thereof, and accused Apple and HP of importing and/or selling products containing Intel’s allegedly infringing microprocessors and components.  The remaining patents-in-suit are U.S. Patent Nos. 8,023,241 (the ‘241 patent), 7,916,444 (the ‘444 patent) and 7,609,500 (the ‘500 patent) which relate to layered arrangements of conductive elements and dielectric materials incorporated into a substrate interposed between an integrated circuit chip and a printed circuit board for reducing electromagnetic interference in circuits.  In particular, the ‘241 patent relates to an arrangement for conditioning energy within electronic circuitry applications, the ’444 patent is directed to embodiments that allow the architecture to be incorporated into different electronic structures, and the ‘500 patent relates to embodiments that increase electrode shielding.

According to the ID, ALJ Shaw found no violation of Section 337 by reason of infringement of the asserted claims of the ‘241, ‘444 or ‘500 patents.  The ALJ also determined that claims 20 and 28-31 of the ‘241 patent and claims 29, 31, 33 and 36 of the ‘444 patent are invalid.  Further, ALJ Shaw found that the domestic industry requirement was satisfied with respect to all of the patents-in-suit.  We now provide additional details regarding the ID.

Claim Construction

As an initial matter, ALJ Shaw agreed with Respondents that because the patents-in-suit all claim priority to U.S. Patent No. 5,909,350 (the ‘350 patent) through U.S. Patent No. 6,738,249 (the ‘249 patent), the asserted claims of each patent must be construed in accordance with (and not broader than) the specifications of the ancestor ‘350 and ‘249 patents.

First, the parties disputed the meaning of the term “differential conductive layer” in claim 46 of the ‘500 patent.  X2Y urged that the plain and ordinary meaning should apply, but if a construction is required, then this term should mean “a non-common conductive layer having at least one different electromagnetic property (e.g., voltage, current or phase) with respect to another non-common conductive layer.”  However, ALJ Shaw agreed with Respondents that the intrinsic evidence and understanding of a person of ordinary skill in the art supported interpreting this term as requiring the differential conductors be “paired” with one another.  Thus, this term was construed to mean “a conductor paired with an electromagnetically opposite conductor in a different layer.”

Second, the parties disputed the meaning of a group of “electrode” terms in the asserted claims of all three patents-in-suit.  X2Y again argued for plain and ordinary meaning, while Respondents proposed to construe these terms as “a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.”  The ALJ again agreed with Respondents’ proposed construction, finding that the patents-in-suit unequivocally require (1) the use of a common conductive pathway to shield the oppositely phased conductors of a differential pair; (2) that the oppositely phased conductors of a differential pair be positioned in an opposing manner such that their respective magnetic fields cancel each other out; and (3) the placement of a ground plane between the oppositely phased conductors of a differential pair.

Third, the parties disagreed as to whether the term “portion” in the asserted claims of the ‘241 and ‘444 patents is indefinite (as proposed by Respondents), or whether this term should be given its plain and ordinary meaning (as proposed by X2Y).  ALJ Shaw agreed with Respondents that this term is indefinite, reasoning that “portion” as used in the ‘241 and ‘444 patents claims undefined subparts of power planes or signal lines, and that no limits are otherwise placed on the scope of this term by the claims.  For example, the ALJ determined that in light of the claim language itself, a “portion” could refer to as little as an atom of a conductor or as much as the entirety of the conductor.  ALJ Shaw also noted that neither X2Y nor its expert could identify the boundaries of the “portion” claims.

Fourth, the parties disputed the meaning of the “perimeter edge” terms of the asserted claims of the ‘241 patent.  X2Y proposed that this term refers to the edge of an electrode recited in the claims, whereas Respondents argued that this term means the edge of an “area” of the recited electrode.  ALJ Shaw again found that the intrinsic evidence and understanding of a person of ordinary skill in the art supported Respondents’ proposed construction.

Infringement

First, ALJ Shaw addressed Respondents’ argument that X2Y did not show infringement by any accused Intel substrate since X2Y did not analyze any physical samples, but instead based its infringement analysis on Intel’s design files which deviate from the actual substrates insofar as Intel specifies manufacturing tolerances for signal line width, layer alignment and dielectric thickness.  The ALJ did not find this argument persuasive, noting that Respondents did not raise the issue until post-hearing briefing and thus precluded X2Y from obtaining further discovery as to same.

Respondents’ second non-infringement argument was that X2Y provided no evidence that the accused Intel substrates form the capacitor between electrodes on opposite sides of a ground plane that the ‘350 patent describes as a “feature universal to all embodiments” of the invention.  X2Y and its expert countered that testing was not required because such capacitance is a necessary result of the geometry of the conductors, and that there is necessarily capacitance between “any two conducting objects” in the world.  ALJ Shaw agreed with Respondents and found that the accused products do not infringe the patents-in-suit on this basis, observing that the question is not “whether there is some theoretical capacitance between signal lines in the Intel substrates, but instead whether in the context of real world devices there is a measurable capacitance sufficient to form the required “line to line differential coupling capacitor” (which the evidence showed there was not).

Third, Respondents’ contended that the accused Intel substrates do not infringe because they have no center common ground plane that exists between a pair of electromagnetically opposite conductors as required by the asserted claims under Respondents’ proposed construction of the “electrode” terms.  Having adopted Respondents’ proposed construction, ALJ Shaw agreed that the accused products do not infringe, citing testimony from X2Y’s expert that the power planes identified by X2Y as infringing structures are not electromagnetically opposite to one another.

Validity

Respondents asserted six prior art references against the asserted claims:  (1) the HP PA-7000; (2) the Intel 4580 Pentium OverDrive; (3) the Intel 4730 Pentium OverDrive with MMX; (4) the Apple PowerBook 520; (5) U.S. Patent No. 4,891,616 to Renken (“Renken”); and (6) JP App. No. H06-251981 to Kojima (“Kojima”).

Respondents argued that all six references either anticipate or render obvious the asserted claims of the ‘241 patent if the claims are interpreted so as not to require a common conductive pathway electrode positioned between paired electromagnetically opposite conductors (which they were not, as discussed above).  Accordingly, under this supposition, the disputed issues were whether the prior art (i) satisfies the limitations requiring “superposed perimeter edge portion arrangements;” (ii) discloses shielded, non-superposed areas; (iii) teaches a consecutive 5-layer stack-up; (iv) satisfies the spacing relationships recited in the asserted claims; and (v) teach a substrate.  Regarding (i), ALJ Shaw agreed with Respondents that all six references satisfy the “superposed perimeter edge portion arrangement” limitations of claims 20 and 28 under both parties’ proposed constructions.  With respect to (ii), the ALJ agreed with Respondents that the asserted references disclose the “shielded surface area” limitations of claims 14, 20 and 28-31, and that a person of ordinary skill in the art would have considered it obvious to modify an existing circuit design to create both superposed and non-superposed shielded areas.  As to (iii), ALJ Shaw agreed with Respondents that modifying prior art substrates to include a consecutive 5-layer stack-up as recited in claims 16-18 and 28-31 would have been obvious to a person of ordinary skill in the art.  Regarding (iv), the ALJ agreed with Respondents that each of the references meets or renders obvious the “even spacing” limitations of claim 18, and noted that the minor variations alleged to exist in the PowerBook and other references do not preclude them from falling within the scope of the claims.  Finally, with respect to (v), ALJ Shaw agreed with Respondents that the “substrate” limitation of claims 27-31 is satisfied by Renken’s disclosure of a circuit board composed of at least one dielectric board substrate, Kojima’s disclosure of an “integrated chip capacitor, and the PowerBook’s main logic board.

Respondents likewise contended that all six prior art references either anticipate or render obvious the asserted claims of the ‘444 patent if the claims are interpreted so as not to require a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.  Accordingly, under this supposition, the disputed issues were whether the prior art (i) teaches “superposed alignment;” (ii) teaches arrangements “operable beyond 1 GHz;” (iii) satisfies the spacing relationships recited in the asserted claims; (iv) renders obvious 10-layer structures; (v) discloses structures that are “conductively coupled;” and (vi) discloses structures that are “conductively connected.”  Regarding (i), ALJ Shaw agreed with Respondents that the HP PA-7000, Intel 4580 Pentium OverDrive, and Intel 4730 Pentium OverDrive with MMS satisfy the limitation “wherein said second shielded electrode portion and said fourth shielded electrode portion are in a first superposed alignment with each other” as required by the asserted claims.  With respect to (ii), the ALJ agreed with Respondents that one of ordinary skill in the art would have recognized that previously developed fundamental circuit design elements such as those used in earlier RF and package designs could be adapted for operations above 1 GHz as required by claim 29.  As to (iii), ALJ Shaw agreed with Respondents that although the Intel 4850 and Intel 4730 power stacks do not disclose even spacing, it nevertheless would have been obvious to modify the spacing layers to satisfy the “even spacing” limitations of the asserted claims.  Regarding (iv), the ALJ agreed with Respondents that it would have been obvious to modify a 5-layer stack structure to achieve the 10-layer structure of claims 31, 33 and 36.  With respect to (v), ALJ Shaw agreed with Respondents that the electrodes of the Intel 4580 and Intel 4730 are neither connected to each other or to a common ground reference, and are thus “conductively isolated” as required by the second and fourth electrodes in the 5-layer stack of claim 26.  Regarding (vi), the ALJ similarly agreed with Respondents that the signal and power stacks of the Intel 4580 and Intel 4730 meet the requirement in claim 33 that the seventh and ninth electrodes of the second 5-layer stack be “conductively connected to each other,” and further, that it would have been obvious to conductively connect the seventh and ninth electrodes of the signal stack of the Intel 4730, the signal stack of the HP PA-7000, and the PowerBook 520 to reach this limitation.

Respondents further argued that the HP PA-7000, Intel 4580, and Intel 4730 render obvious the asserted claims of the ‘500 patent if the claims are interpreted so as not to require a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.  Accordingly, under this supposition, the disputed issues were (i) whether the limitations requiring controlled collapse chip connection (“C4”) bumps as connectors would have been obvious over the prior art; and (ii) whether the claimed spatial relationships between ground and power planes are present in or rendered obvious by the prior art.  Regarding (i), ALJ Shaw agreed with Respondents that it would have been obvious to modify the asserted references which used wire bond contact arrays to meet the limitations of claims 23 and 30 requiring C4 bumps attaching the die to a substrate and a contact array that comprises at least one of a C4 bump array, a BGA ball array, and an FCPGA pin array.  With respect to (ii), the ALJ agreed with Respondents that the Intel 4580 and Intel 4730 satisfy the limitations of “said first ground plane surface is larger than said power plane surface” and “first ground periphery extends a second distance from said power plane periphery” under both parties’ proposed constructions, and to the extent these limitations are not disclosed, they would have been an obvious design choice.

Additionally, Respondents argued that the claims on which X2Y relies to satisfy the technical prong of the domestic industry requirement -- claim 1 of the ‘241 patent, claim 9 of the ‘444 patent, and claims 10 and 46 of the ‘500 patent -- are invalid over the prior art if the claims are interpreted so as not to require a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.  ALJ Shaw agreed with Respondents that the Intel 4580 would invalidate each of X2Y’s domestic industry claims under this supposition.

X2Y maintained that a “host of secondary considerations weigh heavily against a finding of obviousness for the asserted claims, including copying, unexpected results, commercial success, and recognition by others.”  However, ALJ Shaw rejected these arguments, observing that the evidence relied on by X2Y neither established the requisite nexus between the secondary considerations and the asserted claims, nor supported findings of copying, unexpected results, commercial success, or recognition by others.

Further, Respondents argued that claims 1, 20 and 28-31 of the ‘241 patent and claims 9, 29, 31, 33 and 36 of the ‘444 patent are invalid as indefinite under 35 U.S.C. § 112, ¶ 2 “because they, or the claims from which they depend, use the term ‘portion’ in a way that is insolubly ambiguous and not amenable to construction.”  As discussed above, ALJ Shaw determined that the claim term “portion” is itself indefinite.  Thus, the ALJ found that the asserted claims in which “portion” comprises a limitation are invalid for indefiniteness.

Respondents also argued that all the asserted claims were invalid for failure to satisfy the written description requirement of 35 U.S.C. § 112, ¶ 1 if construed so as not to require a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.  However, having construed the asserted claims to incorporate this “essential element” as proposed by Respondents, ALJ Shaw determined that the claims did not fail to satisfy the written description requirement.

Moreover, Respondents contended that the patents-in-suit are invalid for improper inventorship under 35 U.S.C. § 102(f) on the grounds that X2Y made no showing of any specific contribution by named inventor William Anthony, who allegedly “had no training or knowledge of circuit design, including never having read anything about the subject” as of April 1996.  ALJ Shaw did not find sufficient evidence to support this argument, and noted that no party cited any legal authority requiring that a person have a particular level of skill or achievement in the relevant field to be named as an inventor.

Equitable Defenses

Respondents asserted theories of equitable estoppel, unclean hands and laches as additional defenses to infringement.  Regarding estoppel, Respondents argued that X2Y engaged in misleading conduct “demonstrated by comparing its private, unrevealed conduct against the face it presented to Intel.”  However, ALJ Shaw rejected this defense on the grounds that Intel failed to prove that it suffered material prejudice as a result of X2Y’s allegedly misleading conduct.  Respondents’ unclean hands defense was based in part on its allegations of equitable estoppel and spoliation, and was similarly rejected.  Finally, ALJ Shaw determined that even if laches were deemed an equitable bar to the prospective relief available in Section 337 investigations (which Respondents asserted inasmuch as the public interest is “scarcely served by rewarding X2Y’s tactics”), Respondents failed to show that X2Y’s delay in bringing suit was unreasonable and inexcusable.

Domestic Industry

X2Y argued that the economic prong of the domestic industry requirement was satisfied under Section 337(a)(3)(A) and (B) by the activities of its licensee, Johanson Dielectrics Inc. (“JDI”).  Specifically, X2Y pointed to JDI’s significant investments in plant and equipment, significant employment of labor and capital, and substantial investments in engineering and research and development with respect to the patents-in-suit at its Sylmar, California plant.  X2Y also argued that the economic prong was satisfied under Section 337(a)(3)(C) based on X2Y’s substantial investment in engineering, research and development, and licensing activities.  Respondents’ countered that neither JDI’s activities nor X2Y’s alleged expenditures in the exploitation of the patents-in-suit satisfied the economic prong, and that “JDI is disqualified from being the ‘domestic industry’ because it has disclaimed any interest in the Investigation and admits that it stands to gain nothing from it.”  The Commission Investigative Staff (“OUII”) maintained that JDI’s activities satisfied the economic prong under Section 337(a)(3)(A) and (B), but that X2Y’s licensing activities did not satisfy the economic prong under Section 337(a)(3)(C).  ALJ Shaw agreed with OUII, finding that the economic prong was satisfied under Section 337(a)(3)(A) and (B) by the activities of JDI, but that the record was not clear enough as to the specific expenditures made by X2Y in connection with licensing the patents-in-suit.

X2Y relied on claim 1 of the ‘241 patent, claim 9 of the ‘444 patent, and claims 10 and 46 of the ‘500 patent to satisfy the technical prong of the domestic industry requirement.  ALJ Shaw agreed with X2Y that the JDI-X2Y capacitors practice these claims as properly construed.

Remedy and Bonding

In the event a violation of Section 337 is found by the Commission, ALJ Shaw recommended the issuance of a cease and desist order and a limited exclusion order (“LEO”).  In particular, the ALJ agreed with OUII that any exclusion order should be limited to mitigate harmful effects on U.S. consumers, such as shortages of Intel microprocessors and Apple and HP computers, servers and workstations that incorporate them.  The ALJ was also persuaded by Respondents and OUII’s argument that an LEO encompassing the accused Intel microprocessors and the downstream products of Apple and HP raised significant public interest concerns with respect to the public health and welfare (e.g., lost jobs and adverse effects on U.S. manufacturing) and competitive conditions in the U.S. economy (e.g., reducing competition in certain product markets).  Thus, ALJ Shaw noted that one option proposed by OUII would be to delay entry of an exclusion order by at least nine months so that Apple and HP would have time to adjust their manufacturing operations to incorporate non-infringing microprocessors.  Moreover, the ALJ found that in the event an LEO is issued by the Commission, it should be directed only to Intel’s microprocessors, as the nine so-called “EPROMS” factors weighed against extending an LEO to downstream products made by Apple and HP.

ALJ Shaw also recommended imposition of a bond set at a reasonably royalty rate, based on the available license evidence, during the Presidential review period in the event the Commission finds a violation of Section 337.
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