By Eric Schweibenz and Lisa Mandrusiak
On January 14, 2015, ALJ Thomas B. Pender issued Order No. 10 construing the disputed claim terms of the asserted patents in Certain Devices Containing Non-Volatile Memory and Products Containing the Same (Inv. No. 337-TA-922).  Due to the size of the order, we have split the order into part 1, part 2, and part 3.

By way of background, this investigation is based on a June 27, 2014 complaint filed by Macronix International Co., Ltd. and Macronix America, Inc. (collectively, "Macronix") alleging violation of Section 337 in the importation into the U.S. and sale of certain devices containing non-volatile memory and products containing the same that infringe one or more claims of U.S. Patent Nos. 5,998,826 ("the '826 patent"); 6,031,757 ("the '757 patent"); 8,341,324 ("the '324 patent"); and 8,341,330 ("the '330 patent").  See our June 30, 2014 and August 4, 2014 posts for more details on the complaint and Notice of Investigation, respectively.

The '826 Patent

In the Order, ALJ Pender first addressed the "extend[ing] substantially" claim term. Macronix argued that no construction was necessary, while Respondents and the Commission Investigative Staff ("OUII") proposed "extending nearly across the channel" and "extending across the channel and substantially," respectively.  ALJ Pender noted that "a reasonable conclusion is that Respondents' proposed construction is based upon preventing a finding of infringement and not upon the language of the claim, the specification, or the patent history," and simply gave the term its plain and ordinary meaning.

Macronix and OUII agreed that the next term, "the substrate is coupled to an external reference supply applying a ground potential and a positive supply potential" should be construed as "the substrate is coupled to an external voltage source configured to apply a ground potential and a positive supply potential," while Respondents argued that the phrase is indefinite.  ALJ Pender agreed with Macronix and OUII, and noted that "I cannot and will not accept Respondents' indefiniteness arguments at this juncture."

ALJ Pender gave the final term, "the integrated circuit further including only a supply pin and a ground pin for supplying power to the integrated circuit," its plain and ordinary meaning, as suggested by Macronix and OUII.

The '757 Patent

ALJ Pender addressed the terms "control inputs," "address inputs," and "data input/outputs" together, giving them their plain and ordinary meaning as suggested by Macronix and OUII.  The ALJ stated that Respondents' position, that these terms require dedicated pins, improperly read a limitation from a specific embodiment into the claims.

Macronix and OUII also argued that the term "sector lock signal" should be given its plain and ordinary meaning, or in the alternative, Macronix suggested the construction "a signal indicating a protected status for a sector in the array."  ALJ Pender agreed with Macronix's proposed construction, noting that it closely aligned with the language of the claims as read in light of the specification, whereas Respondents' proposal attempted to improperly limit the claim.

Although Macronix and Respondents proposed competing constructions of the final term, "set of control signals," ALJ Pender agreed with OUII that this phrase should be given its plain and ordinary meaning, as this term would be understandable to those skilled in the art "without diminishing its scope."

The '324 Patent

The only term at issue in the '324 patent, "transmitting the instruction, the address, or the read out data" was argued to have its plain and ordinary meaning by Macronix and OUII, while Respondents argued that this term was indefinite.  ALJ Pender determined that the term did not need construction, as it was clear on its face, and stated that even if he were not persuaded by Macronix and OUII's positions, he "would still not determine this language in dispute is indefinite at this stage of the proceedings."

The '330 Patent

Macronix argued that "performance enhancement indicator" should be construed as "signal indicating that an enhanced read operation is to be performed," while OUII and Respondents asserted that it should be construed as "a signal that initiates an enhanced read operation."  ALJ Pender determined that the specification strongly supported Macronix's position, and he adopted Macronix's proposed construction of "signal indicating that an enhanced read operation is to be performed."

Macronix and OUII proposed that the term "enhanced read operation" be construed as "read operation in which multiple reads are performed requiring only one read command," and Respondents proposed "a read operation with reduced data access time."  ALJ Pender agreed with Macronix and OUII, as their proposed construction was most consistent with the specification as a whole.