20
May
By Eric Schweibenz
Further to our April 6, 2011 post, on May 12, 2011, Chief ALJ Paul J. Luckern issued the public version of the Initial Determination (“ID”) (dated April 4, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. No. 337-TA-709).

By way of background, the Commission instituted this investigation on March 29, 2010.  The Complainant is Freescale Semiconductor, Inc. (“Freescale”) and the Respondents remaining in the investigation are Funai Electric Co., Ltd. and Funai Corporation, Inc. (collectively, “Funai”), Wal-Mart Stores, Inc., Best Buy Purchasing, LLC, BestBuy.Com, LLC, and Best Buy Stores, L.P (all Respondents collectively, the “Respondents”).  Only claims 9 and 10 of U.S. Patent No. 5,467,455 (the ‘455 patent) remain at issue.  See our April 5, 2011 post for more details.

The ‘455 patent is entitled “Data Processing System and Method for Performing Dynamic Bus Termination.”  Claim 9 recites a data processor within an integrated circuit package generally comprising an execution unit internal to the data processor, a plurality of external pins connected to the integrated circuit package such that the plurality of external pins are used to bidirectionally communicate logic bits to and from the data processor via an external bus, a plurality of bus termination circuits, and a conductor coupled to each input of each of the bus termination circuits.  The conductor provides a control signal such that when the control signal is asserted, it allows each bus termination circuit to couple at least one circuit component to the bus to reduce signal reflection on the bus, and when deasserted, it allows each bus termination circuit to decouple at least one circuit component from the bus.  Claim 10 depends from claim 9 and further requires that at least one circuit component be a circuit component selected from a group consisting of:  “a capacitor, a diode, a resistor, a transistor, a voltage source, a current source, an electrical short circuit, and an inductor.”

According to the ID, ALJ Luckern determined that there was no violation of Section 337 in this investigation by the Respondents.  Specifically, ALJ Luckern determined, inter alia, that (1) Freescale failed to show that claims 9 and 10 of the ‘455 patent are infringed, (2) it has not been established that claims 9 and 10 of the ‘455 patent are invalid, and (3) Freescale has established a domestic industry.  ALJ Luckern further recommended that, in the event that the Commission determines that there has been a violation of Section 337, limited exclusion orders and cease and desist orders should issue, but no bond should be required.

Claim Construction

In the ID, ALJ Luckern construed the following claim terms:  (1) “circuit” and “circuitry;” (2) “circuit component;” (3) “bus termination circuit;” (4) “execution unit;” (5) “the plurality of bus termination circuits providing data to or receiving data from the execution unit…;” (6) “the plurality of external pins used to bidirectionally communicate logic bits to and from the data processor via an external bus;” and (7) “couple” and “decouple.”

With respect to “circuit” and “circuitry,” ALJ Luckern determined to accord the terms their plain and ordinary meaning, which he took to be an “assemblage of electronic elements.”

As to “circuit component,” ALJ Luckern determined that based on the claim language and the ‘455 specification, the term should be construed as an element of a circuit that provides impedance for termination.  According to the ID, all parties agreed with this construction.

As to “bus termination circuit,” ALJ Luckern determined to construe the term as proposed by Freescale and OUII, i.e., “circuitry for signal termination that is selectively enabled or disabled in response to a control signal whose assertion is based, at least in part, on the direction of data signals on the bus.”

With respect to “execution unit,” ALJ Luckern construed the term as “a portion of an integrated circuit that executes commands or instructions.”

As to “the plurality of bus termination circuits providing data to or receiving data from the execution unit…,” ALJ Luckern found that it is a requirement of the claim that the bus termination unit can both provide and receive data; not do only one or the other.  Further, with respect to “providing,” ALJ Luckern found that nothing in the claim language indicated the manner that said data is provided.  Accordingly, the ALJ accorded the claimed phrase “providing data to or receiving data from” its plain meaning, i.e., “the plurality of bus termination circuits supplying data to or getting data from the execution unit.”  ALJ Luckern rejected Respondents’ argument in favor of an “active participation” requirement.

With respect to “the plurality of external pins used to bidirectionally communicate logic bits to and from the data processor via an external bus,” ALJ Luckern determined that the claimed phrase in issue should be construed as “a plurality of external pins used to bidirectionally communicate logic bits from the data processor, the logic bits travelling to and from the data processor via an external bus.”

As to “couple” and “decouple,” ALJ Luckern determined that “couple” means “electrically connect to” and “decouple” means “electrically disconnect from.”  The ALJ also noted that the private parties had made several arguments related to the particular use of the terms “couple” and “decouple” with respect to the “at least one circuit component” and that the parties therefore appeared to be attempting to interpret a larger claim limitation rather than just the claimed phrases “couple” and “decouple.”  ALJ Luckern thus further determined that the circuit component must be electrically disconnected from the bus, such that it, inter alia, can no longer reduce signal reflection on the bus.

Infringement

In the ID, ALJ Luckern noted that an important threshold issue with respect to infringement was the admissibility of certain documents that Freescale had obtained from third party Zoran Corporation (“Zoran”), whose integrated circuits are allegedly incorporated into Funai’s accused products.  At the evidentiary hearing, counsel for Freescale had indicated that Freescale would not be able to prove infringement by a preponderance of the evidence if the documents were not admitted.  ALJ Luckern had admitted the documents at the hearing but encouraged the parties to present arguments in their post-hearing briefs, findings of fact, and rebuttal findings of fact regarding the weight, if any, the ALJ should give to the documents in making a determination on infringement.

Freescale argued that the documents contained schematics representing the accused products because the schematics had been provided by Zoran in response to a subpoena.  Funai argued that the ALJ should give no weight to the Zoran documents because they were not properly authenticated or shown to be reliable and representative of the circuits used in Funai products.  Specifically, Funai noted that Freescale’s expert did not examine actual Zoran circuits or Funai products.  Funai further argued that both Funai’s and Freescale’s experts had acknowledged that there was nothing in or about the Zoran documents that indicated that they are final documents or correspond to specific manufactured products, let alone the accused products.  Moreover, Funai noted that ALJ Luckern had granted a request by Freescale to extend the discovery deadline with respect to obtaining additional discovery from Zoran, but Freescale did not depose Zoran, seek an affidavit from Zoran regarding Zoran documents, or move to have the Zoran subpoena enforced.  Lastly, Funai argued that Freescale could not rely on the fact that the documents had been produced in response to a subpoena to establish that the documents are reliable because “the documents bear indicia of unreliability.”  OUII argued that the documents are reliable and the testimony regarding the documents should be given full weight.

ALJ Luckern determined that there was a link between some of the documents and the Zoran chips present in the accused products.  However, the ALJ found that the sponsoring witness for the documents (Freescale’s expert) could provide no details regarding how the datasheets had been created or the origin of certain information contained therein and relied primarily on the fact that the datasheets had been produced pursuant to a subpoena in concluding that the technical information contained therein accurately represented the composition of the accused products.  In particular, ALJ Luckern found that, even though Freescale’s expert was not an attorney, he had based his conclusions regarding the reliability of the documents on the legal conclusion that because the datasheets had been produced in response to a subpoena they are presumed reliable.  Moreover, Freescale had not presented anything from Zoran explaining the documents.  Accordingly, ALJ Luckern determined to give the documents no weight in making his determination on infringement.  Importantly, he noted that neither Freescale nor OUII had cited any law establishing that documents produced pursuant to a third-party subpoena are inherently reliable or establishing a presumption that said documents are reliable, and that the ALJ had found no law supporting these arguments.

In view of ALJ Luckern’s determination to give no weight to the Zoran documents — and Freescale’s admission at the evidentiary hearing that it would not be able to prove infringement if the documents were not admitted — ALJ Luckern determined that Freescale had failed to show that the accused products infringe the asserted claims of the ‘455 patent.  However, ALJ Luckern nevertheless proceeded to make findings as to whether or not there would be infringement if the documents had been admitted.

ALJ Luckern first found that Zoran chips are installed in the accused Funai products.  Based on the Zoran datasheets, ALJ Luckern determined that the Zoran chips practice the preamble of claim 9 of the ‘455 patent; that is; they are integrated circuits that contain a data processor.  Next, the ALJ determined that, if the Zoran documents were accorded weight, then the accused products would practice certain claim limitations of claim 9.

Accordingly, ALJ Luckern found that if the Zoran documents had been accorded weight, the accused products would have been found to infringe claim 9 of the ‘455 patent.  Moreover, he found that the accused products would have met the additional limitation of dependent claim 10 and would have been found to infringe that claim as well if the Zoran documents had been accorded weight.

Invalidity

With respect to invalidity, Respondents argued that asserted claims 9 and 10 of the ‘455 patent are anticipated by U.S. Patent No. 3,832,575 (“Dasgupta”) and obvious over Dasgupta in view of certain secondary references.  Respondents also argued that claims 9 and 10 are invalid for lack of written description.

As to anticipation, ALJ Luckern noted that there was no evidence in the record of the evidentiary hearing that the asserted claims are invalid as anticipated by any prior art reference.  ALJ Luckern further noted that Respondents’ expert had not offered any opinion relating to Respondents’ anticipation defense.  The ALJ found that none of the embodiments in Dasgupta disclose either transmit circuitry or a transmit path for data.  Accordingly, ALJ Luckern found that the data bus connected to the integrated circuits described in Dasgupta is uni-directional and that Dasgupta does not disclose “the control signal… to couple at least one circuit component to the bus” or an external bus “used to bidirectionally communicate logic bits to and from the data processor.”  The ALJ also found that the generic “receiver circuit” shown in Dasgupta meets neither the “data processor within an integrated circuit package” nor the “execution unit internal to the data processor” limitations of claim 9.  Moreover, the ALJ found that Dasgupta does not disclose “bus termination circuits” or “plurality of bus termination circuits.”  Accordingly, ALJ Luckern determined that Respondents had not met their burden of proving by clear and convincing evidence that the asserted claims are anticipated by Dasgupta.

Regarding obviousness, ALJ Luckern noted that, at the hearing, Respondents had contended that claims 9 and 10 of the ‘455 patent were rendered obvious by (A) Dasgupta in view of a Gist patent; (B) Dasgupta in view of a Gabara patent; (C) Dasgupta in view of a Lauffer patent; and (D) Dasgupta in view of a Work patent.  ALJ Luckern determined that none of these combinations contain all the elements of claims 9 and 10.  The ALJ further found that Respondents had failed to prove that the asserted claims are obvious because they had not established why a person of ordinary skill in the art at the time the ‘455 patent application was filed would have combined any of the references in the manner asserted.

In particular, with respect to Dasgupta in view of Gist, Dasgupta in view of Gabara, and Dasgupta in view of Lauffer, ALJ Luckern determined that these combinations do not disclose certain claim limitations.  Accordingly, ALJ Luckern found that Respondents had failed to prove that claims 9 and 10 of the ‘455 patent are invalid as obvious over any of the asserted combinations.

With respect to written description, Respondents argued that the claim 9 limitation “plurality of external pins… used to bidirectionally communicate logic bits to and from a data processor via an external bus” is unambiguous and requires that data be passed from the external pins to the data processor by way of an external bus, and to the external pins from the data processor by way of an external bus.  According to Respondents, there is no embodiment disclosed in the ‘455 patent that reads on this limitation and therefore claim 9 and dependent claim 10 are invalid for lack of written description.  Freescale argued that the parties dispute the meaning of the limitation at issue and that under its and OUII’s interpretation, the limitation is consistent with all disclosed embodiments in the ‘455 patent.  ALJ Luckern found that the term in fact means “a plurality of external pins used to bidirectionally communicate logic bits to and from a data processor via an external bus” and that the specification of the ‘455 patent supports this construction.  Accordingly, ALJ Luckern determined that Respondents had not established that the asserted claims are invalid for lack of written description.

Remedy and Bonding

With respect to remedy, ALJ Luckern recommended that if the Commission were to find a violation of Section 337, a limited exclusion order and cease and desist orders would be appropriate, but no bond should be imposed during the Presidential review period.

In the ID, ALJ Luckern applied the analysis set forth in Certain Erasable Programmable Read-Only Memories, Components Thereof, Products Containing Such Memories, and Processes for Making Such Memories, Inv. No. 337-TA-276, Comm’n Op. (May 1989) (“EPROMS”) for determining whether an exclusion order should extend to downstream products.  In particular, the ALJ rejected Freescale’s argument that the accused products in the investigation are not actually “downstream products” but are instead Funai’s “own infringing products.” ALJ Luckern cited case law indicating that products containing an allegedly infringing product are in fact considered to be downstream products.  Accordingly, ALJ Luckern applied an EPROMs analysis to Funai’s accused products, which contain allegedly infringing integrated circuits from third-party Zoran.

Based on the EPROMs analysis, ALJ Luckern recommended that a limited exclusion order directed at Respondents’ products that incorporate the allegedly infringing integrated circuits should issue in the event that the Commission finds a violation of Section 337.  The ALJ further recommended that cease and desist orders would be appropriate if a violation is found.

ALJ Luckern also recommended that no bond be imposed during the Presidential review period.  The ALJ noted that a bond of 100%  — as requested by Freescale — is levied only when reliable price information is not available.  Here, however, the ALJ found that there were indications that reliable price information may have been available to Freescale.  Accordingly, ALJ Luckern denied Freescale’s request for a bond set at 100%, and instead recommended that no bond be imposed.
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