united states court of appeals for the federal circuit · huawei technologies co., ltd., huawei...

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2018-1439 (Lead), -1440, -1441, -1444, -1445

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

TECHNOLOGY PROPERTIES LIMITED LLC, PHOENIX DIGITAL

SOLUTIONS LLC, PATRIOT SCIENTIFIC CORPORATION,

Plaintiffs-Appellants,

v.

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

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

TECHNOLOGIES USA INC., ZTE CORPORATION, ZTE USA, INC.,

SAMSUNG ELECTRONIC CO., LTD., SAMSUNG ELECTRONICS

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

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

Defendants-Appellees.

Appeal from the United States District Court for the Northern District of

California in Case Nos. 3:12-cv-03865-VC, 3:12-cv-03876-VC, 3:12-cv-03877-

VC, 3:12-cv-03880-VC, and 3:12-cv-03881-VC, Judge Vince Chhabria.

NON-CONFIDENTIAL DEFENDANTS-APPELLEES’ RESPONSE BRIEF

[caption with counsel continues on following page]

Case: 18-1439 Document: 66 Page: 1 Filed: 07/03/2018

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DLA PIPER LLP (US)

Mark D. Fowler

Aaron Wainscoat

Erik R. Fuehrer

2000 University Avenue

East Palo Alto, CA 94303

Tel: (650) 833-2000

James M. Heintz

11911 Freedom Dr.

Reston, VA 20190

Tel: (703) 733-4000

Stanley J. Panikowski

Robert C. Williams

401 B Street, Suite 1700

San Diego, CA 92101

Tel: (619) 699-2700

Attorneys for Defendants-Appellees

SAMSUNG ELECTRONICS CO., LTD.

and SAMSUNG ELECTRONICS

AMERICA, INC.

STEPTOE & JOHNSON LLP

Timothy C. Bickham

1330 Connecticut Avenue, NW

Washington, DC 20036

Tel: (202) 429-5517

Michael E. Flynn-O’Brien

One Market Street

Steuart Tower, Suite 1800

San Francisco, CA 94105

Tel: (415) 365-6700


HUAWEI TECHNOLOGIES CO.,

LTD., HUAWEI DEVICE CO., LTD.,

HUAWEI DEVICE USA INC.,

FUTUREWEI TECHNOLOGIES, INC.,

and HUAWEI TECHNOLOGIES USA

INC.

MCDERMOTT WILL & EMERY

LLP

Charles M. McMahon

Hersh H. Mehta

444 West Lake Street

Chicago, IL 60606

Tel: (312) 372-2000


ZTE CORPORATION and ZTE (USA)

INC.

FISH & RICHARDSON P.C.

Christian A. Chu

1000 Maine Avenue SW


Tel: (202) 783-5070

Joseph B. Warden

[email protected]

222 Delaware Avenue

17th Floor, P.O. Box 1114

Wilmington, DE 19801

Telephone: (302) 652-5070


LG ELECTRONICS, INC. and

LG ELECTRONICS USA. INC.

COOLEY LLP

Matthew J. Brigham

3175 Hanover Street

Palo Alto, CA 94304-1130

Tel: (650) 843-5000

Stephen R. Smith

1299 Pennsylvania Ave. NW, Suite 700


Tel: (703) 456-8000


NINTENDO CO., LTD and

NINTENDO OF AMERICA INC.


FORM 9. Certificate of Interest Form 9 Rev. 10/17


Technology Properties Limited LLC, et al. v. Huawei Technologies Co., Ltd. et al.

Counsel for the: (petitioner) (appellant) (respondent)

Samsung Electronics Co., Ltd. & Samsung

Case 18-1439, -1440, -1441,

No. -1444, -1445

(name of party)

CERTIFICATE OF INTEREST

8 (appellee) (amicus)

Electronics America, Inc.

certifies the following (use "None" if applicable; use extra sheets if necessary):

1. Full Name of Party Represented by me

2. Name of Real Party in interest (Please only include any real party in interest NOT identified in Question 3) represented by me is:

3. Parent corporations and publicly held companies that own 10 % or more of

stock in the party

Samsung Electronics Co., Ltd. None None

Samsung Electronics America, Inc. None Samsung Electronics Co., Ltd.

4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are: DLA Piper LLP (US): Ryan Cobb (no longer with firm)

WEST\280219095.2 American LegaDiet, Inc. C) www.FonnsWorkFlow.com

,..

American LegalNet, Inc. www.FormsWorkFlow.com

FORM 9. Certificate of Interest Form 9Rev. 10/17

WEST\280219095.2



Case No. 18-1439, -1440, -1441, -1444, -1445


Counsel for the: (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)

Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc.



2. Name of Real Party in interest (Please only include any real party in interest NOT identified in Question 3) represented by me is:

3. Parent corporations and publicly held companies that own 10 % or more of

stock in the party

Samsung Electronics Co., Ltd. None None

Samsung Electronics America, Inc. None Samsung Electronics Co., Ltd.

4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are: DLA Piper LLP (US): Ryan Cobb (no longer with firm)



5. The title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court's decision in the pending appeal. See Fed. Cir.R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary). The only such cases of which counsel is aware are the cases that already are part of these consolidated appeals: 18-1439, 18-1440, 18-1444, and 18-1445.

February 5, 2018 /s/ Aaron Wainscoat Date Signature of counsel

Please Note: All questions must be answered Aaron Wainscoat

Printed name of counsel cc: All Counsel of Record

WEST\280219095.2 American LegalNet, Inc. www.FormsWorkFlow.com


WEST\280219095.2

5. The title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary). The only such cases of which counsel is aware are the cases that already are part of these consolidated appeals: 18-1439, 18-1440, 18-1444, and 18-1445.

February 5, 2018 /s/ Aaron Wainscoat

Date Signature of counsel

Please Note: All questions must be answered Aaron Wainscoat

Printed name of counsel

cc: All Counsel of Record




v.

Case No.


Counsel for the: (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)

certifies the following (use “None” if applicable; use extra sheets if necessary):


2. Name of Real Party in interest (Please only include any real party

in interest NOT identified in Question 3) represented by me is:

3. Parent corporations and publicly held companies that own 10% or more of

stock in the party

4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are:

Technology Properties Limited Huawei Technologies Co., Ltd.

18-1439 (LEAD), 18-1440

ZTE (USA) Inc. ZTE (USA) Inc. Shenzhen Zhongxingxin Telecommunications Equipment Company Limited.

ZTE Corporation ZTE Corporation

McDermott Will & Emery LLP: Charles M. McMahon, Jay H. Reiziss, Hersh H. Mehta, Kieran L.Kieckhefer; Polsinelli: Fabio Marino; Brinks Gilson & Lione: William H. Frankel, Robert S. Mallin;Sheppard, Mullin, Richter & Hampton LLP: Scott R. MIller; Davis Wright Tremaine LLP: Martin L.Fineman.



5. The title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir. R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).

Date Signature of counsel Please Note: All questions must be answered Printed name of counsel cc:

Technology Properties Limited LLC, et al. v. ZTE Corporation, et al., Case No. 3:12-cv-03876-VC,Technology Properties Limited LLC, et al. v. Huawei Technologies Co., Ltd, et al. Case No.2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311

2/5/2018 /s/ Charles M. McMahon

Charles M. McMahon

Counsel of Record

Reset Fields




Technology Properties Limited Huawei Technologies Co., Ltd.

Counsel for the:

Case No. 18-1439; -1440, -1441, -1444,-1445


• (petitioner) • (appellant) • (respondent) M (appellee) • (amicus) III (name of party)


1. Full Name of PartyRepresented by me

2. Name of Real Party in interest(Please only include any real party

in interest NOT identified inQuestion 3) represented by me is:

3. Parent corporations andpublicly held companiesthat own 10% or more of

stock in the party

LG Electronics, Inc. LG Electronics, Inc. LG Corporation

LG Electronics U.S.A., Inc. LG Electronics U.S.A., Inc. LG Electronics, Inc.

4. The names of all law firms and the partners or associates that appeared for the party or amicus nowrepresented by me in the trial court or agency or are expected to appear in this court (and who have notor will not enter an appearance in this case) are:

Fish & Richardson, P.C., Michael J. McKeon, Christian A. Chu, Leeron Kalay,Olga l. May, Shelley K. Mack (no longer with firm), Wasif H. Qureshi (no longer with firm), Scott A.Elengold (no longer with firm)



5. The title and number of any case known to counsel to be pending in this or any other court or agencythat will directly affect or be directly affected by this court's decision in the pending appeal. See Fed. Cir.R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).

The only such cases of which counsel is aware are the cases that already are part of theseconsolidated appeals: 18-1439, 18-1440, 18-1441, 18-1444, and 18-1445.

5/2/2018Date

Please Note: All questions must be answered

All Counsel of record via CM-ECFcc:

/s/ Christian A. ChuSignature of counsel

Christian A. ChuPrinted name of counsel

Reset Fields




Technology Properties Limited, LLC, et al.Huawei Technologies Co., Ltd., et al.v.

Counsel for the:

Case No..18-1439


• (petitioner) • (appellant) • (respondent) M (appellee) • (amicus) • (name of party)

Nintendo of America Inc. & Nintendo Co., Ltd.certifies the following (use "None if applicable; use extra sheets if necessary):

1. Full Name of PartyRepresented by me

2. Name of Real Party in interest(Please only include any real party

in interest NOT identified inQuestion 3) represented by me is:

3. Parent corporations andpublicly held companiesthat own 10% or more of

stock in the party

Nintendo of America Inc. N/ANintendo Co., Ltd., is publicly traded in Japan,and owns 100% of Nintendo of America Inc. Stock

Nintendo Co., Ltd. N/ANintendo Co., Ltd., is publicly traded in Japan, anowns 100% of Nintendo of America Inc. stock

4. The names of all law firms and the partners or associates that appeared for the party or amicus nowrepresented by me in the trial court or agency or are expected to appear in this court (and who have notor will not enter an appearance in this case) are:

Cooley LLP: Thomas J. Friel, Jr.; Stephen R. Smith; Matthew J. BrighamNixon & Vanderhye, P.C.: Updeep S. Gill



5. The title and number of any case known to counsel to be pending in this or any other court or agencythat will directly affect or be directly affected by this court's decision in the pending appeal. See Fed. Cir.R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).

N/A

2/5/2018Date


cc:

/s/ Stephen R. SmithSignature of counsel

Stephen R. SmithPrinted name of counsel

Reset Fields





Counsel for the:

Case No. 18-1439, -1440, -1441, -PM, -1445


■ (petitioner) ■ (appellant) ■ (respondent) EX (appellee) ■ (amicus) ■ (name of party)

Huawei Technologies Co., Ltd.; Futurewei Technologies, Inc.; Huawei Device Co., Ltd.; Huawei Device USA Inc.; Huawei Technologies USA, Inc. certifies the following (use "None" if applicable; use extra sheets if necessary):


2. Name of Real Party in interest (Please only include any real party

in interest NOT identified in Question 3) represented by me is:

3. Parent corporations and publicly held companies that own 10% or more of

stock in the party

Huawei Technologies Co., Ltd. n/a see attached Page 3

Futurewei Technologies, Inc. n/a see attached Page 3

Huawei Device Co., Ltd. n/a see attached Page 3

Huawei Device USA Inc. n/a see attached Page 3

Huawei Technologies USA, Inc n/a see attached Page 3

4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are:

Steptoe & Johnson LLP: William F. Abrams (no longer with firm), Morgan Linscott Hector (no longer with the firm) and Huan-Yi Lin (no longer with firm)



5. The title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court's decision in the pending appeal. See Fed. Cir. R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).

The only such cases of which counsel is aware are the cases that already are part of these consolidated appeals: 18-1439, 18-1440, 18-1444, and 18-1445.

7/2/2018 Date


cc:

/s/ Timothy C. Bickham Signature of counsel

Timothy C. Bickham

Reset Fields

Printed name of counsel



Technology Properties Limited v. Huawei Technologies Co., Ltd.

Case No. 18-1439, -1440, -1441, 141111, -1445

CERTIFICATE OF INTEREST (Attached Page 3)

Counsel for the Appellee Huawei Technologies Co., Ltd.; Futurewei Technologies, Inc.; Huawei Device Co., Ltd.; Huawei Device USA Inc.; and Huawei Technologies USA, Inc. certifies the following:

3. All parent corporations and any publicly held companies that own 10 percent of the stock of the party or amicus curiae represented by me are listed below.

Huawei Technologies Co., Ltd. is a wholly owned subsidiary of Huawei Investment & Holding Co., Ltd. and no publicly held company owns 10% or more of its stock.

Huawei Device Co., Ltd. is jointly owned by Huawei Technologies Co., Ltd. and Huawei Tech. Investment Co., Ltd. and no publicly held company owns 10% or more of its stock.

Huawei Device USA Inc. is a wholly owned subsidiary of Huawei Device (Hong Kong) Co., Ltd. and no publicly held company owns 10% or more of its stock.

Futurewei Technologies, Inc. is a wholly-owned subsidiary of Huawei Technologies Cooperatief U.A. and that no publicly held company owns 10% or more of its stock.

Huawei Technologies USA, Inc. is a wholly owned subsidiary of Huawei Technologies Cooperatief U.A. and no publicly held company owns 10% or more of its stock.

Page 3


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TABLE OF CONTENTS

Page

STATEMENT OF RELATED CASES .................................................................... 1

STATEMENT OF THE ISSUES.............................................................................. 1

STATEMENT OF THE CASE ................................................................................. 2

A. Introduction .......................................................................................... 2

B. The ’336 Patent’s Variable-Speed Clock ............................................. 3

C. The Accused Products .......................................................................... 6

1. Undisputed Operation of PLLs in the Accused Products .......... 6

2. The ’336 Patent Ring Oscillator Is Different than the

Oscillators in the Accused Products ........................................ 11

3. The Output of the PLL Is the Output of the VCO ................... 13

SUMMARY OF THE ARGUMENT ..................................................................... 13

ARGUMENT .......................................................................................................... 14

A. Standard Of Review ........................................................................... 14

B. The VCOs In The Accused Products Do Not Practice The

Claimed Frequency Variation ............................................................ 15

1. The Claimed PVT Variations Are the Only Frequency

Variations Claimed by the Patent ............................................ 16

2. Minimal Variations Are Outside the Claim Scope .................. 16

3. Command Input Variations Are Disclaimed ........................... 19

4. Hypothetical Variations Never Occur in the Accused

Products .................................................................................... 20

C. The District Court Correctly Granted Summary Judgment ............... 23

1. The District Court Did Not Improperly Import Functional

Limitations into Apparatus Claims .......................................... 23

2. Appellees’ Summary Judgment Motion Was Directed to

the VCO, Which Is Part of the PLL ......................................... 29


ii WEST\281365459

TABLE OF CONTENTS (Continued)

Page

3. Appellants’ Reliance on A.B. Dick and Skedco Is

Misplaced ................................................................................. 33

4. There Is No Disputed Question of Fact that Precludes

Summary Judgment ................................................................. 40

D. The Magar Disclaimer Provides An Alternative Basis For

Affirming The District Court’s Judgment .......................................... 42

1. Undisputed Evidence Confirms that the VCO Frequency

Is Fixed by an External Crystal in the Accused Products ........ 43

2. Appellants’ Arguments Regarding the Magar Disclaimer

Lack Merit ................................................................................ 44

E. There Is No Basis for Revisiting and Revising This Court’s

Claim Construction in the First Appeal ............................................. 47

CONCLUSION ....................................................................................................... 53


iii WEST\281365459

CONFIDENTIAL MATERIAL OMITTED

A numerical range of testing results for the accused products was omitted

from page 18. The portions of the declaration of Appellees-Defendants’ expert,

Dr. Vivek Subramanian, from which the testing results were excerpted were

designated as confidential by Defendants-Appellees in the underlying proceedings

and were filed under seal pursuant to an order in the district court (Docket No. 146

in Case No. 3:12-cv-3865-VC).

Portions of a quotation from the declaration of third-party Qualcomm

Incorporated declarant, Marzio Pedrali-Noy, were omitted from page 22. The

paragraph from the declaration of Mr. Pedrali-Noy from which the quote was

excerpted was designated as confidential by third-party Qualcomm Incorporated in

the underlying proceedings and was filed under seal pursuant to an order in the

district court (Docket No. 146 in Case No. 3:12-cv-3865-VC).


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TABLE OF AUTHORITIES

CASES Page

A.B. Dick Co. v. Burroughs Corp.,

713 F.2d 700 (Fed. Cir. 1983) ................................................................ 33, 34, 35

Accent Packaging, Inc. v. Legett & Platt, Inc.,

707 F.3d 1318 (Fed. Cir. 2013) .................................................................... 38, 44

Augme Techs. Inc. v. Yahoo! Inc.,

755 F.3d 1326 (Fed. Cir. 2014) .......................................................................... 14

Bailey v. Dart Container Corp.,

292 F.3d 1360 (Fed. Cir. 2002) .......................................................................... 42

Deckers Corp. v. United States,

752 F.3d 949 (Fed. Cir. 2014) ............................................................................ 52

Del Mar Avionics, Inc. v. Quinton Instrument Co.,

836 F.2d 1320 (Fed. Cir. 1987) .......................................................................... 50

Designing Health, Inc. v. Collett,

226 F. App’x 976 (Fed. Cir. Feb. 26, 2007) (unpublished) ................................ 49

Doe v. United States,

463 F.3d 1314 (Fed. Cir. 2006) .......................................................................... 49

E-Pass Techs., Inc. v. 3COM Corp.,

473 F.3d 1213 (Fed. Cir. 2007) .......................................................................... 50

Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,

149 F.3d 1309 (Fed. Cir. 1998) .......................................................................... 50

Goodyear Dental Vulcanite Co. v. Davis,

102 U.S. 222 (1880) ............................................................................................ 53

Graham v. John Deere Co. of Kansas City,

383 U.S. 1 (1966) .......................................................................................... 52, 53

Greater Yellowstone Coal. v. Lewis,

628 F.3d 1143 (9th Cir. 2010) ............................................................................ 14


v WEST\281365459


(Continued)

Page

Hewlett-Packard Co. v. Bausch & Lomb Inc.,

909 F.2d 1464 (Fed. Cir. 1990) .................................................................... 26, 27

High Tech Med. Instr., Inc. v. New Image Indus., Inc.,

49 F.3d 1551 (Fed. Cir. 1995) ................................................................ 36, 37, 44

Hill-Rom Services, Inc. v. Stryker Corp.,

755 F.3d 1367 (Fed. Cir. 2014) .................................................................... 25, 26

In re Schreiber,

128 F.3d 1473 (Fed. Cir. 1997) .......................................................................... 25

In re Swinehart,

439 F.2d 210 (CCPA 1971) ................................................................................ 25

K-2 Corp. v. Salomon S.A.,

191 F.3d 1356 (Fed. Cir. 1999) .......................................................................... 26

Outside the Box Innovations, LLC v. Travel Caddy, Inc.,

695 F.3d 1285 (Fed. Cir. 2012) ........................................................ 34, 35, 36, 44

Phillips Petroleum Co. v. Huntsman Polymers Corp.,

157 F.3d 866 (Fed. Cir. 1998) ............................................................................ 41

Skedco, Inc. v. Strategic Operations, Inc.,

685 F. App’x 956 (Fed. Cir. April 24, 2017) ................................................ 33, 39

Smith Int’l, Inc. v. Hughes Tool Co.,

759 F.2d 1572 (Fed. Cir. 1985) .......................................................................... 51

Tech. Props. Ltd. LLC v. Huawei Techs. Co. Ltd.,

849 F.3d 1349 (Fed. Cir. 2017) ...................................................................passim

TechSearch, L.L.C. v. Intel Corp.,

286 F.3d 1360 (Fed. Cir. 2002) .......................................................................... 41


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(Continued)

Page Tronzo v. Biomet, Inc.,

236 F.3d 1342 (Fed. Cir. 2001) .......................................................................... 48

United States v. Husband,

312 F.3d 247 (7th Cir. 2002) .............................................................................. 49

Wright Med. Tech., Inc. v. Osteonics Corp.,

122 F.3d 1440 (Fed. Cir. 1997) .......................................................................... 26


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TABLE OF ABBREVIATIONS

’336 patent U.S. Patent No. 5,809,336

CPU central processing unit

ICO current-controlled oscillator

PLL phase locked loop

ppm parts-per-million

PVT parameters or PVT parameters of temperature, voltage, and process

VCO voltage controlled oscillator


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STATEMENT OF RELATED CASES

On March 3, 2017, a panel of this Court issued a precedential decision

largely affirming the district court’s claim construction, but vacating and

remanding the stipulated judgment of non-infringement due to a “minor

modification” of that construction. The unanimous decision is reported at 849 F.3d

1349, and the panel consisted of Judges Moore (author), Wallach, and Chen. Tech.

Props. Ltd. LLC v. Huawei Techs. Co. Ltd., Lead Appeal No. 16-1306.

Counsel for Appellees are aware of the following cases that will be directly

affected by this Court’s decision in the pending appeal:

No. 3:12-cv-03865-VC, Technology Properties Limited LLC, et al. v.

Huawei Technologies Co., Ltd., et al.;

No. 3:12-cv-03876-VC, Technology Properties Limited LLC, et al. v. ZTE

Corporation, et al.;


Samsung Electronics, Co., Ltd., et al.;

No. 3:12-cv-03880-VC, Technology Properties Limited LLC, et al. v. LG

Electronics, Inc., et al.; and


Nintendo Co., Ltd., et al.

STATEMENT OF THE ISSUES

1. Did the district court correctly grant summary judgment of non-

infringement where the undisputed facts show that the accused products do not

practice the asserted claims as construed by this Court in the first appeal?


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2. Should this Court accept Appellants’ belated invitation to reverse this

Court’s long-standing precedent that, as occurred here, an applicant may clearly

and unmistakably surrender claim scope through arguments to overcome prior art

rejections during prosecution?

STATEMENT OF THE CASE

A. Introduction

This Court observed in Appellants’ first appeal in this case that the Court’s

“minor modification to the district court’s claim construction [of ‘entire oscillator’]

likely does not affect the outcome of this case.” Tech. Props. Ltd. LLC v. Huawei

Techs. Co. Ltd., 849 F.3d 1349, 1360 (Fed. Cir. 2017). In the first appeal, this

Court held that the ’336 patent applicants repeatedly made clear and unambiguous

disclaimers during prosecution to overcome two prior art references, Sheets and

Magar. Id. at 1358-60. The Court accounted for both disclaimers under the well-

established precedent of this Court, construing the term “entire oscillator” to mean

“an oscillator located entirely on the same semiconductor substrate as the central

processing unit” (1) “that does not require a command input to change the clock

frequency” (i.e. the “Sheets disclaimer”) and (2) “and whose frequency is not fixed

by any external crystal” (i.e. the “Magar disclaimer”). Id. at 1360.

Applying this Court’s construction on remand, the district court correctly

concluded that undisputed evidence confirms that the accused products do not


3 WEST\281365459

infringe. As the district court ruled, and as this Court’s prior decision held, the

claimed entire oscillator that clocks the central processing unit (CPU) is located on

the same substrate as the CPU so that the frequency of the oscillator and the clock

rate of the CPU automatically vary together based upon external stressors such as

temperature and voltage, without requiring a command input to change the

oscillator’s frequency. Tech. Props., 849 F.3d at 1353, 1359-60. In contrast,

undisputed evidence shows that a command input is required to change the

oscillator’s frequency in the accused products. Indeed, absent such an input, the

oscillator’s frequency is so tightly locked to a selected multiple of a fixed

frequency crystal oscillator that Appellants themselves characterize any purported

minute frequency variation resulting from external stressors as “fixed” and “not

meaningful.” Thus, the accused products do not satisfy the Sheets disclaimer.

Further, although the district court did not reach the issue, undisputed evidence

shows that the accused products also do not satisfy the Magar disclaimer because

the oscillator’s frequency is fixed by an external crystal.

B. The ’336 Patent’s Variable-Speed Clock

The ’336 patent is directed to a variable-speed clock (“entire oscillator”) that

controls the speed of a CPU. Appx0063 (’336 patent at cover), Appx0090-0091

(’336 patent at 16:43-17:10). Citing the “Optimal CPU Clock Scheme” section of

the specification that addresses this aspect of the claimed invention, Appellants


4 WEST\281365459

characterize the invention as one in which the clock is a ring oscillator fabricated

on the same silicon chip as the rest of CPU. Appellants’ Opening Brief (“Op. Br.”)

at 8-10. However, this is only half the story of the claimed variable-speed clock.

The same section of the specification further explains that the frequency (speed) of

the clock – identified as a “ring oscillator” in the preferred embodiment – “is

determined by the parameters of temperature, voltage, and process” (“PVT

parameters” or simply “PVT”), where the clock frequency varies in response to

changes in these parameters. Appx0090-0091 (’336 patent at 16:59-17:10).

More specifically, the specification states that because the ring oscillator is

on the same semiconductor substrate as the CPU and is made of the same materials

as the CPU, the transistors that make up the ring oscillator are affected by PVT

parameters in the same way that the transistors that make up the CPU are affected.

Appx0090-0091 (’336 patent at 16:63-17:10). For example, the patent states that

when the operating temperature increases, the transistors in both the CPU and the

ring oscillator slow down by the same amount. And because the transistors of the

ring oscillator and the CPU are affected by PVT in the same way, the CPU “will

always execute at the maximum possible speed, but never too fast.” Appx0090-

0091 (’336 patent at 16:67-17:2). Thus, the ring oscillator’s frequency in the

“Optimal CPU Clock Scheme” taught by the specification automatically varies in


5 WEST\281365459

response to PVT in the same way the maximum clock rate of the CPU varies in

response to PVT, so that the ring oscillator and CPU always execute at the

maximum possible frequency (speed) for any given combination of PVT

parameters.

The asserted claims embody this clear teaching of the specification; they do

not merely require that the entire oscillator be located on the same substrate as the

CPU, but also recite that because they are so co-located, the processing frequency

of the oscillator and the clock rate of the CPU must vary in the same way as a

function of PVT variation. For example, claim 6 recites:

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 . . .

Appx0112 (’336 patent at 2:14-30) (emphasis added).


6 WEST\281365459

C. The Accused Products

1. Undisputed Operation of PLLs in the Accused Products

Although Appellees’ various accused products are complex devices having

many differences, it is undisputed that each product includes a phase locked loop

(“PLL”). There is also no dispute about the basic operation of the PLLs.

Appx5015.

As Appellants correctly stated in the first appeal, a PLL is a device that

generates a “clock signal at a relatively fixed frequency.” Appx6715 (Ex. 5,

Appellants’ First Appeal Brief (“First Appeal Br.”) at 20); see also Appx5434 (Ex.

6, Subramanian Tr. at 1212:17-1214:25). The key components of a PLL are

correctly illustrated by Appellants in the following diagram from Exhibit B to their

Second Amended Infringement Contentions (the “PLL Diagram”):


7 WEST\281365459

Appx5032; see also Appx5015, Appx6508-6509, Appx5325, Appx5251; Op. Br. at

29-30.

In the PLL Diagram, the components of the PLL are located within the blue

box labeled “PLL System.” These components include: (1) either a voltage

controlled oscillator (“VCO”) or a current-controlled oscillator (“ICO”),1 which

Appellants refer to as a “ring oscillator”;2 (2) PLL control circuitry for controlling

the frequency of the VCO; and (3) at least one programmable divider, which

Appellants refer to as a “programmable divisor.”

As Appellants concede, the VCO in the PLL in the accused products “is not

a free running oscillator, as described in column 17 of the ’336 Patent.” Appx6715

(First Appeal Br. at 20). Rather, it is an oscillator whose frequency is tightly

controlled by the PLL control circuitry to provide a stable fixed frequency output

that is an exact multiple of the frequency of a fixed frequency crystal oscillator.

Appx6715; see also Appx5434 (Subramanian Tr. at 1212:17-1214:25).

1 The PLLs in some accused products include VCOs while others include ICOs.

Although differences exist between these two types of oscillators, the parties agree

the differences are immaterial to the issues in this appeal. See Appx5167 (Dkt. No.

127 (SAIC) at 3) (“this difference is not believed to be important”); Op. Br. at 27.

For simplicity, Appellees refer to the oscillator in each accused PLL as a “VCO.” 2 Appellees dispute that the oscillators in the accused PLLs are the claimed “ring

oscillators” of the ’336 patent.


8 WEST\281365459

As illustrated in the PLL Diagram, the VCO outputs the clock signal on two

paths. First, the VCO clock signal is output by the PLL to the CPU. Second, the

VCO clock signal is sent to the PLL control circuit via a feedback loop that

includes at least one programmable divisor. Appx5032. As explained below, this

feedback signal is used to ensure that the output of the VCO is locked to the

desired frequency. As part of this process, the programmable divisor in the

feedback loop divides down the frequency of the VCO clock signal by a fixed

value set by CPU software controlling the PLL. Appx5327 (Subramanian Decl. ¶

44).

Each of the PLLs in the accused products requires and relies upon an input

from an off-chip crystal oscillator or clock generator, depicted in the PLL Diagram

as the “quartz crystal” providing a “reference signal” to the PLL control circuit.

Appx5032. As Appellants admitted in the first appeal, the PLL control circuit

“uses this reference signal to set the output of the oscillator to a specific

frequency.” Appx6715-6716 (First Appeal Br. at 20-21); see also Appx5328

(Subramanian Decl. ¶ 45). Although it is not possible to change the frequency of

the crystal oscillator in the accused products, Appellants’ expert acknowledged that

if the external crystal’s frequency were to go up, the VCOs frequency would also


9 WEST\281365459

go up by a fixed ratio, and if the crystal oscillator’s frequency were to go down, so

too would the VCO’s frequency. Appx5425 (Oklobdzija Tr. at 836:1-19).

To set the output frequency of the VCO, the PLL control circuit performs a

“phase checking” function by comparing the phase of the fixed-frequency

reference signal received from the external crystal with the phase of the divided-

down signal received through the PLL’s feedback loop. Appx5433 (Subramanian

Tr. at 1152:11-1153:3); Appx5482 (RDX-4.46C). Based on this comparison, the

PLL control circuit determines whether the VCO’s output frequency must be

increased or decreased so that the phase of the divided-down feedback signal

remains locked to the phase of the fixed-frequency external crystal.3 Appx5433;

Appx5482. The PLL control circuit then adjusts a command signal (the PLL

Control Signal in the PLL Diagram above), which is sent to the VCO to control the

VCO’s output frequency in order to maintain a phase lock between the reference

signal and the feedback signal from the programmable divisor. Appx5433;

Appx5482. In this way, the PLL feedback loop compensates for PVT variations to

ensure the VCO output frequency is “locked” to a multiple of the fixed-frequency

reference signal from the crystal oscillator. Appx5326 (Subramanian Decl. ¶ 40).

3 Two signals must have the same frequency to be in phase with each other. Thus,

ensuring that the phase of one signal remains locked to the phase of another signal

ensures the signals have the same frequency. Appx5320 (Subramanian Decl. ¶ 25).


10 WEST\281365459

As discussed above, the VCO output frequency is a fixed multiple of the

crystal oscillator frequency. The amount of the fixed multiplier is determined by

the values of the programmable divisors shown in the diagram on page 6 above.

Appx5328 (Subramanian Decl. ¶ 45). For example, if the crystal oscillator

operates at 20 MHz, and the programmable divisor is set to 100, the PLL control

circuity sets the fixed output frequency of the VCO (and thus the fixed output

frequency of the PLL) to the value of 100 times the frequency of the crystal – i.e. 2

GHz (so that when the 2GHz signal is divided by 100, the resulting divided-down

signal of 20 MHz matches the 20 MHz frequency of the crystal oscillator).

Appx5328; see also Appx6715-6716 (First Appeal Br. at 20-21). Accordingly, for

any given PLL, the fixed output frequency of the VCO is a direct mathematical

function of the frequency of the crystal oscillator and the values of the

programmable divisors. Appx5328 (Subramanian Decl. ¶ 46); see also Appx6539

(Oklobdzija Decl. ¶ 34).

Because the PLL’s VCO output frequency is a function of the fixed

frequency of the crystal oscillator and the values of the one or more programmable

divisors in the PLL, it is undisputed the VCO output frequency can be changed to a

different fixed frequency only by changing the values of the programmable

divisors. Appx5328 (Subramanian Decl. ¶ 46); Appx5430-5431 (Oklobdzija Tr. at


11 WEST\281365459

967:22-970:3); see also Appx5289 (Pedrali-Noy Decl. ¶¶ 5-6); Appx5298-5300

(Lee Decl. ¶¶ 15-19). In the accused products, the value of the programmable

divisors are changed via digital command inputs to set the values of registers

associated with the divisors. Appx5327 (Subramanian Decl. ¶ 44); see also

Appx5289 (Pedrali-Noy Decl. ¶¶ 5-6); Appx5300 (Lee Decl. ¶ 19); Appx5593

(RX-690C). Other than changes resulting from such command inputs, the VCO

output frequency does not change; rather the PLL circuitry ensures that the VCO

output frequency remains fixed to a multiple of the external crystal’s fixed

frequency. Appx5328 (Subramanian Decl. ¶ 46); Appx5290 (Pedrali-Noy Decl. ¶

10).

2. The ’336 Patent Ring Oscillator Is Different than the Oscillators

in the Accused Products

Although Appellants repeatedly assert that the structure of the ring oscillator

of the ’336 patent is identical to the VCOs in the accused products (see Op. Br. at

2-3, 5, 37, 49), that is demonstrably incorrect due to a fundamental difference

between the two. The VCOs in the accused products include a control voltage

input signal (which is separate from the operating voltage that powers the device)


12 WEST\281365459

whose role is to control the frequency of the accused oscillators.4 Appx5331

(Subramanian Decl. ¶ 50). The VCO’s control voltage input signal is the PLL

control signal in the diagram on page 6, above. In contrast, the ring oscillator

disclosed in the ’336 patent has no separate input by which its frequency is or can

be controlled. Appx0090 (’336 patent at 16:56-60). Rather, as is both described

and claimed by the ’336 patent, the frequency of the ring oscillator is determined

by the varying PVT parameters under which it is operating at any given time.

Appx0090 (’336 patent at 16:56-60), Appx0112 (’336 patent at 2:18-30). The

diagrams below, from Appellees’ expert, illustrate this structural difference:

Appx5331 (Subramanian Decl. ¶ 50). Thus, unlike the free running oscillator of

the ’336 patent whose frequency changes automatically in real time in response to

PVT changes, the frequency of the VCOs in the accused products is fixed by the

4 Appellants’ Opening Brief includes part of a figure depicting the “ICO1”

oscillator in one accused product. Op. Br. at 28 (top right figure). Although it is

somewhat difficult to see in the figure as edited by Appellants, the ICO1 oscillator

includes a control input on the left side of the box surrounding “ICO1” (the small

black dot on the left vertical line). This control input is shown in its entirety in the

original, unedited figure (the arrow to the left of the rectangle). See Appx5538.


13 WEST\281365459

control voltage input signal that is provided by the PLL control circuitry (as shown

in the PLL Diagram at page 6 above). Appx5331.

3. The Output of the PLL Is the Output of the VCO

Appellants describe the frequency output of the PLL as something different

than the frequency output of the VCO, as if they are somehow distinct. See, e.g.,

Op. Br. at 31, 57. They are not – they are one and the same, as is shown in the

PLL Diagram above at page 6. As seen there, the only clock frequency output by

the PLL is the output frequency of the VCO.

SUMMARY OF THE ARGUMENT

The only thing that stood between Appellees and a complete affirmance in

the first appeal was this Court’s “minor modification to the district court’s

construction,” which this Court said “likely does not affect the outcome of this

case.” Tech. Props., 849 F.3d at 1360. On remand, Appellants took their shot at

arguing that this Court’s minor modification to one of the two prosecution

history disclaimers (this Court left the other disclaimer completely intact) was

enough to avoid summary judgment of non-infringement. Appellants’ arguments

failed then, and they are equally unavailing on appeal. The undisputed material

facts show that, as a matter of law, the accused products do not practice the

asserted claims. This is true both for the reasons the district court gave in its


14 WEST\281365459

order granting summary judgment to Appellees, and for additional independent

reasons the district court did not reach.

Tacitly recognizing their inability to show a triable issue under this Court’s

claim construction, Appellants now ask this Court to toss out its prior

precedential decision in this case, along with decades of the Court’s prosecution

history disclaimer jurisprudence. Appellants’ request is waived because they

failed to make this argument when claim construction was before the Court in the

first appeal. The law of the case doctrine also forecloses this new argument, and

Appellants have not shown that any exception to that doctrine applies here.

Further, a panel of this Court lacks the power to overrule the Court’s prior

precedential decisions anyway. Finally, even if it were possible, there would be

no good reason to discard the Court’s sound disclaimer jurisprudence, which is

consistent with Supreme Court authority.

ARGUMENT

A. Standard Of Review

This Court reviews the grant of summary judgment de novo. Augme Techs.

Inc. v. Yahoo! Inc., 755 F.3d 1326, 1329 (Fed. Cir. 2014) (citing Greater

Yellowstone Coal. v. Lewis, 628 F.3d 1143, 1148 (9th Cir. 2010)).


15 WEST\281365459

B. The VCOs in the Accused Products Do Not Practice the Claimed

Frequency Variation

Although the four are often muddled by Appellants, Appellants’ arguments

implicate the following four distinct types of frequency variation:

(1) Frequency variation resulting from changes in PVT parameters as

described and claimed in the ’336 patent (“Claimed PVT Variations”);

(2) The extremely minute frequency variations exhibited by fixed-

frequency crystal-oscillators and VCOs (“Minimal Variations”);

(3) Frequency variations resulting from command inputs (“Command

Input Variations”); and

(4) Frequency variations that hypothetically could occur in the accused

products only if the PLL circuitry in the accused products were

disabled or removed (“Hypothetical Variations”).

As established below, Appellants’ conflation of these four distinct types of

frequency variation results in infringement arguments that fall well outside the

scope of the asserted claims. In this regard, only the Claimed PVT Variations are

within the scope of the asserted claims. Every other type of variation is beside the

point: Minimal Variations and Command Input Variations fall outside the claim

language and squarely within the scope of the disclaimers in this Court’s claim

construction, and the Hypothetical Variations never occur in the accused products.


16 WEST\281365459

1. The Claimed PVT Variations Are the Only Frequency Variations

Claimed by the Patent

Claimed PVT Variations are the only frequency variations described and

claimed in the ’336 patent. As explained above at pages 3 through 5, the only

frequency variation that is described and claimed in the ’336 patent for the claimed

“entire oscillator” is the frequency variation that automatically results from

changes in PVT parameters. Appx0090-0091 (’336 patent at 16:59-17:10),

Appx0112 (’336 patent at 2:18-28). Tech. Props., 849 F.3d at 1352-53. These

frequency variations are not small; the ’336 patent describes them as being as large

as 400%. Appx0091 (’336 patent at 17:21-22) (“factor of four”) see also

Appx0090 (’336 patent at 16:60-62) (describing a frequency variation of 100%

resulting from a change of temperature).

2. Minimal Variations Are Outside the Claim Scope

The ’336 patent teaches that the frequency of a crystal oscillator is “fixed.”

Appx0091 (’336 patent at 17:25-27, 32-34 (describing the speed of the I/O

interface controlled by a conventional crystal clock as “fixed”)). However, even a

crystal oscillator’s “fixed” frequency actually varies by a minimal amount. The

’336 patent applicants recognized this fact, noting during prosecution that even

fixed-frequency crystal oscillators exhibit some minimal frequency variation as a

result of changes in PVT: “[c]rystals are by design fixed-frequency devices whose


17 WEST\281365459

oscillation speed is designed to be tightly controlled and to vary minimally due to

variations in manufacturing, operating voltage and temperature.” Appx2093

(emphasis added). The applicants then specifically distinguished the “oscillation

frequency of a crystal” due to PVT from the frequency variation “as claimed.”

Appx2093. Thus, the minimal frequency variations exhibited by crystals are

“fixed” frequencies within the meaning of the ’336 patent.

The minimal variations exhibited by crystal devices are indeed very small

when compared to the Claimed PVT Variations described in the ’336 patent. For

example, at the time the ’336 patent was filed, crystals typically exhibited

frequency variations of 100 parts-per-million (“ppm”), or 0.01%, in response to

PVT variations. Appx5446 (Subramanian Tr. at 1483:14-25). Even modern-day

crystal oscillators exhibit frequency variations in response to PVT, albeit only on

the order of 5-10 ppm, or 0.0005% to 0.001%. Appx5446 (Subramanian Tr. at

1483:14-25); Appx5439 (Subramanian Tr. at 1244:14-1246:21); see also

Appx5423 (Oklobdzija Tr. at 765:7-12) (crystal oscillator frequency variance on

the order of 12 ppm). These 0.0005% to 0.01% minimal variations stand in stark

contrast to the above-discussed 400% and 100% entire oscillator variations

described in the ’336 patent.


CONFIDENTIAL MATERIAL DELETED

18 WEST\281365459

The minute frequency variations exhibited by the VCOs in the accused

products fall well within the “fixed” frequency Minimal Variation range exhibited

by crystal devices. Indeed, Dr. Subramanian’s testing of four of the accused

products under different PVT conditions demonstrated frequency variations

ranging from only to . Appx5336 (Subramanian Decl. ¶

62). Dr. Subramanian’s testimony and detailed testing results establish that the

miniscule frequency variation exhibited by the VCOs in the accused products is

effectively and statistically flat – and always within (or less than) the range of

stability exhibited by a fixed-frequency crystal oscillator. See, e.g., Appx5446,

Appx5434-5437, Appx5438-5439 (Subramanian Tr. at 1481:4-9, 1482:14-23,

1215:6-23, 1216:17-1218:5, 1218:8-10, 1218:16-18, 1219:5, 1220:10-1225:19,

1243:1-1244:10); see also Appx6257-6291 (RX-1179C); Appx6324-6325 (RX-

1180C); Appx6292-6323 (RX-1181C); Appx6326-6327 (RX-1182C); Appx6328-

6348 (RX-1183C); Appx6382-6383 (RX-1184C); Appx6349-6381 (RX-1185C);

Appx6384-6385 (RX-1186C); Appx6386-6387 (RX-1187C); Appx6388-6403

(RX-1188C); Appx6404-6405 (RX-1189C); Appx6406-6407 (RX-1190C);

Appx5487 (RDX-4.97C); Appx5488 (RDX-4.98C); Appx5489 (RDX-4.99C);

Appx5490 (RDX-4.100C); Appx5491 (RDX-4.101C). Dr. Subramanian’s

testimony on these points is undisputed. Appx6542-6543 (Oklobdzija Decl. ¶ 41);


19 WEST\281365459

Appx6519 (DI 144 at 24). The evidence thus establishes that the VCO frequencies

in the accused products are “fixed” within the meaning of the ’336 patent.

3. Command Input Variations Are Disclaimed

In the first appeal, this Court held, based upon applicants’ prosecution

history disclaimers regarding the inapplicability of the prior art Sheets patent to the

applicants’ claims, that the claimed “entire oscillator” is one “that does not require

a command input to change the clock frequency.” Tech. Props., 849 F.3d at 1359-

60. The Sheets patent discloses frequency variations that result from a command

input. In Sheets, the CPU is clocked by a voltage-controlled oscillator (VCO),

which transmits the clock signal to the CPU. Tech. Props., 849 F.3d at 1356.

Appx3497 (Sheets at Fig. 1), Appx3500 (Sheets at 1:54-57). The CPU constantly

monitors its processing load to determine an appropriate frequency for that load,

and transmits a command to the VCO to select the appropriate frequency. Tech.

Props., 849 F.3d at 1356. Appx3500 (Sheets at 1:60-68).

The accused products include nearly identical functionality. Appx6543

(Subramanian Decl. ¶ 44). In the accused products, the CPU is clocked by a VCO.

Appx5032. As discussed above, the PLL in the accused products controls the

VCO, via its control voltage input, so that the VCO’s output frequency is an exact

multiple of the fixed frequency of a crystal oscillator. Appx6543-6544

(Subramanian Decl. ¶¶ 44-46); Appx5430-5431 (Oklobdzija Tr. at 967:22-970:3).


20 WEST\281365459

As also discussed above, this exact multiple is determined by the values of the

programmable divisors. Appx5328 (Subramanian Decl. ¶ 45). The values of the

programmable divisors in the accused products are changed via a digital command

input like the command inputs in Sheets to set registers associated with the

programmable divisors. Appx6543 (Subramanian Decl. ¶ 44); Appx5506 (RX-

626C); see also Appx5289 (Pedrali-Noy Decl. ¶¶ 5-6); Appx5298-5300 (Lee Decl.

¶¶ 15-19); Appx5430-5431 (Oklobdzija Tr. at 967:22-970:3); Appx5593 (RX-

690C).

4. Hypothetical Variations Never Occur in the Accused Products

Some of Appellants’ arguments rely on Hypothetical Variations that never

actually occur in the accused products. Appellants concede that Dr. Subramanian’s

testing shows that the actual frequencies output by the VCOs in the accused

products vary by the same miniscule amounts as a crystal oscillator. Appx6519

(DI 144 at 24). The VCO frequencies are therefore fixed. Nonetheless, Appellants

repeatedly assert that the accused VCOs (to which Appellants and Dr. Oklobdzija

sometimes refer as ring oscillators or on-chip oscillators) somehow will vary in

response to PVT variations. See, e.g., Op. Br. at 28 (“the output frequency of

accused VCOs vary based upon process, voltage, or temperature (‘PVT’)”), 29

(“the accused ring oscillators in the accused products vary with fluctuations in

PVT”), 59 (“notwithstanding the addition of a PLL, the ring oscillator remains a


21 WEST\281365459

variable frequency oscillator whose output frequency will vary based on a

processing parameter (how it is manufactured) or an operating parameter

(temperature or voltage), as claimed”).

To support this assertion, Appellants rely on a declaration from their expert

Dr. Oklobdzija. But Dr. Oklobdzija’s declaration makes clear that he is not

referring to frequency variations that ever actually occur in the accused products.

In particular, after acknowledging that Dr. Subramanian’s “testing demonstrates

that the PLL systems result in relatively stable clock frequencies” (Appx6542

(Oklobdzija Decl. ¶ 40)), Dr. Oklobdzija criticizes the testing because it was

performed with the PLL controlling the actual frequency of the VCO as actually

occurs in the accused products as they are sold and used. By contrast,

Dr. Oklobdzija would depart from the actual operation of the accused products to

emphasize Hypothetical Variations that could only result from disabling the PLL:

I do not dispute that PLL is functioning, as Dr. Subramanian

demonstrates. Dr. Subramanian summarized the protocol for a

representative Samsung processor . . . Such a protocol design is

indeed measuring PLL performance as to Dr. Subramanian’s assertion

that “[t]he frequency of a PLL on each of these chips was measured

while environmental temperature was varied,” but the testing does not

measure VCO frequencies during the periods when the PLL is not

intervening. In order to do so, his experiment would need to measure

the VCO’s frequencies with PLL circuitry disabled so that the VCO

frequency changes in response to temperature were not masked by

PLL intervention. Nor did Dr. Subramanian explore a test protocol


CONFIDENTIAL MATERIAL DELETED

22 WEST\281365459

that attempted to explore frequency measurements taken between PLL

interventions.

Appx6542 (Oklobdzija Decl. ¶ 41) (bold/italics added; underline in original).

Despite this criticism, neither Dr. Oklobdzija nor Appellants offer any

evidence that any such frequency changes ever actually occur in the accused

products, that the PLL is ever not intervening, or that the PLLs in the accused

products can even be disabled. Indeed, the record makes clear that they cannot:

“The PLL action is . There are not periods when the PLL

.” Appx5289 (Pedrali-Noy Decl. ¶ 8); see

also Appx5342 (Subramanian Decl. ¶ 76); Appx5289 (Pedrali-Noy Decl. ¶¶ 7, 9);

Appx5301-5303 (Lee Decl. ¶¶ 23-27).

Accordingly, Appellants’ arguments rest on hypothetical changes that might

occur if the PLL and external crystal were not controlling the accused VCOs –

something that never occurs in the accused products. Indeed, Dr. Oklobdzija’s

assertion that the tests should be run with the PLL disabled in order to demonstrate

frequency variation effectively concedes that the VCO frequency in the accused

products is fixed during actual operation.


23 WEST\281365459

C. The District Court Correctly Granted Summary Judgment

Undisputed evidence of the operation of the accused products fully supports

the district court’s legal conclusion that the products do not infringe. Each of

Appellants’ arguments to the contrary lacks merit.

1. The District Court Did Not Improperly Import Functional

Limitations into Apparatus Claims

Contrary to Appellants’ argument, the district court did not improperly

import functional limitations into the asserted apparatus claims. Op. Br. at 53-56.

First, while Appellants assert that “the district court applied this Court’s

claim construction to impart functional requirements on the entire oscillator,”

Appellants do not clearly articulate what these alleged “functional requirements”

are, much less show that they are not in fact required by the claims as construed by

this Court. Op. Br. at 53-54. This Court’s claim construction states, with respect

to the Sheets disclaimer, that the claimed “entire oscillator” is one “that does not

require a command input to change the clock frequency.” Tech. Props., 849 F.3d

at 1360. The district court correctly found that undisputed evidence establishes

“that the frequency on the on-chip oscillator [i.e., the VCO] within the PLL will

remain stable, in the sense discussed above, unless and until it is changed by a

command input . . . ,” and that Appellants had “provided no evidence to the

contrary.” Appx0006; see also Appx0008 (“the accused oscillators are situated


24 WEST\281365459

within PLLs that hold their frequencies effectively steady until they are changed by

a command input” and “it is clear that the accused devices require a command

input to change the clock frequency”). The district court therefore based its non-

infringement conclusion on the claims as construed by this Court, and not on some

alleged extraneous “functional requirement.”

Appellants’ primary objection appears to concern the district court’s

reference near the end of its order to “the free-running oscillators described in the

patent.” Op. Br. at 54 (citing Appx0008). However, as just discussed, the district

court granted summary judgment because, contrary to the requirements of the

claims as construed by this Court, the oscillator frequency in the accused products

cannot be changed without a command input. Appx0005-0008. Moreover, for the

reasons explained at pages 3 through 5 above, the district court’s characterization

of the claimed oscillator as “free-running” is entirely correct as both the claims and

the specification state that the oscillator’s frequency is determined by changes in

PVT parameters. The district court’s earlier discussion of the claimed oscillator

makes clear that its later reference to the “free-running” oscillator refers to the

patent’s and this Court’s discussion of the oscillator’s frequency varying

automatically with changes in PVT. Appx0006. Indeed, as previously noted,

Appellants themselves previously stated that the VCO in the PLL in the accused


25 WEST\281365459

products “is not a free running oscillator, as described in column 17 of the ’336

Patent.” Appx6715 (First Appeal Br. at 20).

Second, Appellants object that the district court somehow erred in applying

what Appellants perceive as “functional” aspects of the claims and this Court’s

claim construction because “[t]he asserted claims are apparatus claims” and

“[i]nfringement of an apparatus claim is found when an accused device meets the

structural limitations of the claims.” Op. Br. at 53. This objection is entirely

misplaced because: (1) the district court faithfully applied this Court’s claim

construction; (2) the district court’s application of the claims is entirely consistent

with both the actual claim language and the disclosure of the specification; and (3)

to the extent there are “functional” aspects of the claims, functional limitations

certainly may exist within apparatus claims.

Regarding the last of these three points, a “patent applicant is free to recite

features of an apparatus either structurally or functionally.” In re Schreiber, 128

F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 210

(CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by

what it does rather than what it is] in drafting patent claims.”)). Claim

constructions that define claim terms with functional language are likewise proper.

Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1374-75 (Fed. Cir. 2014).


26 WEST\281365459

When present, functional limitations must be considered when determining

infringement. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999)

(“[t]he functional language is, of course, an additional limitation in the claim”)

(citing Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443-44 (Fed.

Cir. 1997) (functional language analyzed as claim limitation)); see also Hill-Rom,

755 F.3d at 1375 and 1382 (reversing non-infringement determination and

remanding in view of revised claim constructions, including construction defining

“data link” in functional terms as a link that carries data in a wired or wireless

fashion).

In support of their argument, Appellants cite Hewlett-Packard Co. v. Bausch

& Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990). Op. Br. at 7, 53-54. However, that

case does not stand for the proposition that apparatus claims may not include

functional limitations, or that such limitations do not need to be considered in

determining infringement. The claim at issue in Hewlett-Packard recited both

functional limitations (“wheels being spring biased together to cause the rough

surface to make a series of indentations”) and structural limitations (“the rough

surface on one of said . . . wheels . . . has a random pattern, size and height of

rough spots”). 909 F.2d at 1466-67. The defendant argued that prior art that

included a knurled wheel rather than the claimed wheel (with a rough surface


27 WEST\281365459

having a random pattern, size and height of rough spots) rendered the claim

obvious because there were no “operational differences” between the prior art with

the knurled wheel and the claimed wheel with the random rough surface. Id. at

1468. The Court rejected this argument because the defendant presented no

evidence as to why it would have been obvious for one of skill in the art to modify

the prior art knurled wheel to meet the claim’s structural limitation, not because a

functional limitation was improper or may be ignored. Id.

Third, Appellants assert that the district court erred in applying the Sheets

disclaimer to find no infringement because the court recognized that “minor” and

“all but imperceptible” frequency variations occur within the accused VCOs. Op.

Br. at 54-55 (quoting Appx0005-0006). However, as established at pages 15

through 18 above, any minute variations in the output frequencies, which are

statistically flat, fall well within what is considered a fixed frequency within the

meaning of the ’336 patent. Appx2093. Moreover, the applicants distinguished

such Minimal Variations from the “claimed” variations. Appx2093. In this regard,

the district court correctly found that (1) the record shows that the frequency

variation of the accused VCOs is comparable to that of crystal oscillators, (2)

Appellants agreed that the stabilized outputs of the VCOs in the accused products

are comparable in stability to the output of a crystal, and (3) Appellants agreed that


28 WEST\281365459

a crystal outputs a “fixed” frequency. Appx0005. This Court likewise concluded,

in its opinion in the first appeal, that crystals output a steady frequency that is

fixed. Tech. Props., 849 F.3d at 1353. Accordingly, because the frequency of the

VCO in the accused products is fixed in the absence of a command input (as shown

at pages 10, 11, 17 and 18 above), the district court correctly found that the

accused products do not infringe the asserted claims. Appx0005-0008.

Finally, Appellants are wrong in charging that the district court

“amalgamat[ed]” the two disclaimers by finding that the Minimal Variations were

insufficient to avoid the Sheets disclaimer. Op. Br. at 55-56. The district court did

no such thing. This Court’s claim construction states, with respect to the Sheets

disclaimer, that the claimed “entire oscillator” is one “that does not require a

command input to change the clock frequency.” Tech. Props., 849 F.3d at 1360.

As explained above, the district court correctly concluded that the accused VCOs

maintain a fixed frequency as differentiated by the ’336 patent and that the only

way to change the clock frequency of the accused VCOs is through use of a

command input. Appx0005-0008. The Sheets disclaimer alone therefore

precludes an infringement finding.


29 WEST\281365459

2. Appellees’ Summary Judgment Motion Was Directed to the VCO,

Which Is Part of the PLL

Appellants incorrectly contend that the district court’s decision was

premised on an analysis of the wrong component – the PLL, as opposed to the

VCO – in the accused products. Op. Br. at 56-57. Appellants ignore the

fundamental fact, discussed at page 13 above, that the output of the PLL and the

VCO are one and the same. See also Appx5253 (noting that “the clock signal

output by the VCO is output by the PLL”), Appx5254 (“the output frequency of

the VCO [] is output by the PLL…”). Thus, Appellees’ arguments regarding the

fixed frequency output by the PLL apply equally to the accused VCOs and

Appellants’ arguments are nothing more than a semantic strawman.

Appellants contend that Appellees argued only that the PLL (as opposed to

the VCO) (1) produces a fixed frequency output, (2) requires a command input and

(3) uses a crystal as a reference point. Id. Each of these arguments fails.

First, Appellees argued and showed through undisputed evidence that the

VCO’s output frequency in the accused products is fixed. See, e.g., Appx5253

(“the frequency of the VCO in the accused chips is set to one of a number of fixed

frequencies…”); Appx5254 (“the PLL feedback loop compensates for PVT

variations to ensure the VCO output frequency is ‘locked’ to a multiple of the

fixed-frequency reference signal…”); id. (“the PLL control circuitry sets the fixed


30 WEST\281365459

output frequency of the VCO”); Appx5259 (“PLL’s are by design fixed-frequency

devices whose VCOs output a stable and fixed frequency.”). Indeed, Appellants’

own brief quotes Appellees’ expert’s opinion that the VCO produces a fixed

frequency output. Op. Br. at 29 (quoting Appx5326) (“Thus, the PLL Feedback

Loop compensates for fabrication process, operational supply voltage and

operational temperature (“PVT”) variations to lock the VCO output frequency to a

multiple of the fixed-frequency reference signal from the crystal oscillator.”)

(emphasis modified).

Based upon Appellees’ undisputed evidentiary showing, the district court

correctly found that the frequency of the accused VCOs is fixed and cannot be

changed absent a command input. See, e.g., Appx0005 (“the accused oscillators

operate at frequencies comparably stable to those of crystal oscillators”),

Appx0006 (“The record further shows that the frequency of the on-chip oscillator

within the PLL will remain stable, in the sense discussed above, unless and until it

is changed by a command input . . .”).

Second, Appellants incorrectly contend that Appellees only argued that the

“PLL requires a command input.” Op. Br. at 57. In so asserting, Appellants

ignore the undisputed facts, discussed at pages 10-11 and 18-19 above, that show

that (1) the frequency of the VCO is controlled via the control voltage input to the


31 WEST\281365459

VCO by the PLL, and that (2) the PLL in the accused products uses that PLL

Control Signal to fix the frequency of the VCO in the absence of a command input

to change the frequency. See, e.g., Appx5254 (“The PLL control circuit then

adjusts a command signal that is output to the control voltage input of the VCO to

control the VCO’s output frequency…”), Appx5266 (“The control voltage signal

connected to the control voltage input of the VCO is another command input

required to change the frequency of the VCO.”). In this regard, the behavior of the

accused products is no different than the disclaimed system in Sheets – the

frequency of the VCO does not change until a command input is issued.

Appx5265-5266; Appx3501 (Sheets at 3:58-61, 4:43-48); Appx5327 (Subramanian

Decl. ¶ 44). The district court therefore correctly found based upon the undisputed

evidence before it that a command input is required to change the frequency of the

VCO. Appx0006, Appx0008.

Third, Appellants state that Appellees argued that the PLL uses a crystal as a

reference point. Op. Br. at 57. However, this statement is wholly misdirected here

because it is unrelated to the basis on which the district court granted summary

judgment: the Sheets disclaimer. The Sheets disclaimer does not itself directly turn

on whether an external crystal is used – that is an aspect of the Magar disclaimer,

rather than the Sheets disclaimer.


32 WEST\281365459

Moreover, although not explicit in Appellants’ brief, Appellants’ comments

on this issue appears to be referring to Dr. Oklobdzija’s opinion that the Magar

disclaimer in this Court’s construction requires that the external crystal be directly

connected to the VCO:

I also note that the Federal Circuit indicated that it adopted the

“frequency is not fixed by any external crystal” based on statements

made concerning the Magar reference. Taking the Magar reference,

and applicants’ discussion of it into account, to be “fixed by [an]

external crystal” the system clock would have to be directly connected

or produced by (like in Magar) by the external crystal (as the ’336

Patent’s I/O clock).

Appx6541 (Oklobdzija Decl. ¶ 37).

Dr. Oklobdzija’s “directly connected” opinion is incorrect not only because

this Court imposed no such requirement in its construction, but also because his

opinion appears to assume incorrectly that the scope of the Magar disclaimer must

be measured by the prior art rather than by what the applicants said during

prosecution. This Court rejected this premise in the first appeal. See Tech. Props.

Ltd., 849 F.3d at 1359 (holding that “the scope of surrender is not limited to what

is absolutely necessary to avoid a prior art reference; patentees may surrender more

than is necessary . . . [w]hen this happens, we hold patentees to the actual

arguments made, not the arguments that could have been made.”) (citations

omitted).


33 WEST\281365459

3. Appellants’ Reliance on A.B. Dick and Skedco Is Misplaced

Citing this Court’s decisions in A.B. Dick and Skedco, Appellants argue that

the accused VCOs satisfy the “entire oscillator” limitation notwithstanding the fact

that they do not, and cannot possibly, change frequencies in the accused products

absent a command input. Op. Br. at 58 (citing A.B. Dick Co. v. Burroughs Corp.,

713 F.2d 700 (Fed. Cir. 1983) and Skedco, Inc. v. Strategic Operations, Inc., 685

F. App’x 956 (Fed. Cir. 2017)). More specifically, Appellants argue that the

accused VCOs inherently do not require a command input to change frequencies

and that, “notwithstanding the addition of the PLL, the ring oscillator remains a

variable frequency oscillator whose frequency will vary based upon” PVT. Op. Br.

at 59. Appellants are incorrect as a matter of both fact and law, as the district court

correctly found in response to this same argument. Appx0007-0008.

First, as shown above at pages 6-12 and 18-21, undisputed evidence

conclusively establishes that the frequency of the VCO (the alleged ring oscillator)

in the accused products does not and cannot vary absent a command input. Indeed,

as previously noted, Appellants themselves conceded in the first appeal that the

VCO in the PLL in the accused products “is not a free running oscillator, as

described in column 17 of the ’336 Patent.” Appx6715 (First Appeal Br. at 20).

The undisputed facts concerning the operation of the VCO in the accused products

have not changed since the last appeal.


34 WEST\281365459

Second, Appellants’ argument is contrary to the law. The general statement

in A.B. Dick cited by Appellants – “that one cannot avoid infringement merely by

adding elements if each element recited in the claims is found in the accused

device” – does not apply to the facts of this case. A.B. Dick, 713 F.2d at 703.

Here, each claim element as construed by this Court is not found in the accused

device because the VCOs in the accused products cannot change frequencies

absent a command input. As the district court correctly stated based upon the

undisputed evidence of the design and operation of the PLL and VCO: “that the

accused products all situate the on-chip oscillator within a PLL matters for

purposes of determining whether those products infringe, because the PLLs affect

how the on-chip oscillator’s frequency is determined; the PLL circuitry is not

simply an extra element added on to an infringing device.” Appx0007.

Moreover, this Court’s precedent on this issue subsequent to A.B. Dick –

including each of the three cases cited by the district court on this issue

(Appx0007-0008) – has confirmed that there is no infringement where, as here,

other components in a product prevent an accused component from practicing a

claim limitation by changing the structure or operation of the accused component.

In Outside the Box Innovations, LLC v. Travel Caddy, Inc., the asserted claims

were directed to a tool case and required “a first, flexible, fabric front panel” and


35 WEST\281365459

“a second, flexible, fabric back panel.” 695 F.3d 1285, 1301 (Fed. Cir. 2012). The

accused tool cases had “reinforced [plywood] boards placed in between the fabric

of the front and back panels.” Id. at 1305. In affirming the district court’s

determination of non-infringement, the Court in Outside the Box rejected plaintiff’s

argument regarding A.B. Dick that was very similar to Appellants’ argument here:

Travel Caddy argues that the district court’s construction of “flexible

fabric front panel” is erroneous, for the front and back panels are

made of fabric, and the use of “comprising” in the claim does not

exclude the addition of plywood to the fabric panels. We do not

discern such error, for we agree with the district court that “flexible

fabric front panel” is not reasonably construed to include a plywood-

stiffened fabric panel. Although “[i]t is fundamental that one cannot

avoid infringement merely by adding elements if each element recited

in the claims is found in the accused device,” A.B. Dick Co. v.

Burroughs Corporation, 713 F.2d 700, 703 (Fed.Cir.1983), here the

addition of plywood to the fabric panels removed the flexibility of the

fabric. The usage “comprising” means that additional components

may be present in the device, but does not change the elements that

are stated in the claim . . . The plywood is not simply an additional

element, but a material change in the fabric panel. We agree that the

plywood board is “an additional element [that] changed the structure

of the purported infringing object such that it could not infringe.”

Id. at 1305 (citation omitted) (emphasis added).

The analysis and result in Outside the Box apply equally here. The addition

of plywood in Outside the Box prevented the accused device from satisfying a

recited limitation of the claim. Dr. Subramanian’s undisputed test results likewise

demonstrate that, in the accused products, the oscillator frequency variation

required by the claims is prevented by the use of PLL circuitry that, absent a


36 WEST\281365459

command input, fixes the frequency of the VCOs. Appx5333-5340 (Subramanian

Decl. ¶¶ 55-69). Thus, the PLLs and external crystals are not additional elements

tacked onto an infringing device. Rather, those components change the

functioning of the VCOs such that the accused products cannot infringe the claims.

Appellants argue that Outside the Box is inapposite because the plywood

changed the structure of the claimed “flexible fabric.” Op. Br. at 61. However, the

“fabric” itself was not changed. What took the otherwise flexible fabric outside

the scope of the claims was the addition of the plywood which rendered the fabric

inflexible. Here, just as the addition of plywood prevented the accused product in

Outside the Box from satisfying the “flexible” limitation, the addition of PLL

circuitry in Appellees’ accused products prevents the frequency of the accused

VCOs from changing absent a command input.

In High Tech Med. Instr., Inc. v. New Image Indus., Inc., 49 F.3d 1551 (Fed.

Cir. 1995), this Court concluded that there was no infringement where, as here,

other components in a product prevented an accused component from practicing a

limitation of the claims. The claim at issue there recited a “camera being rotatably

coupled to said body member.” Id. at 1553. The accused camera, as designed and

sold, did not rotate because two set screws prevented rotation of the camera. Id.

However, the district court found that loosening the set screws allowed the camera


37 WEST\281365459

to rotate, and therefore that the camera was “rotatably coupled to the body

member” as claimed. This Court reversed, finding:

In the AcuCam, as designed, sold and intended for use, the camera is

rigidly coupled to its housing. The original and intended operating

configuration of the device must be altered – by loosening the set

screws – in order for the camera to rotate.

Id. at 1555. In reaching its conclusion, this Court noted that the district court had

found the AcuCam camera was not designed to rotate during operation, there was

no reference to rotation of the camera in any promotional materials, and there was

no evidence that any user had loosened or removed the set screws prior to or

during actual use. Id. at 1556. Accordingly, this Court held that the patentee was

unlikely to succeed in proving infringement, because “[t]he original and intended

operating configuration of the device must be altered” under the district court’s

incorrect screw-loosening infringement theory. Id. at 1555.

The High Tech holding applies here because the accused products are not

designed to operate without the PLLs and because Appellants have not offered any

evidence that it is possible to remove or disable the PLLs, which, as established

above, it is not.

Appellants purport to distinguish High Tech by asserting that “nor is change

or alteration to the accused products necessary to demonstrate infringement.” Op.


38 WEST\281365459

Br. at 61. However, as established above, that is incorrect – the accused products

do not infringe as they actually are sold and used.

In Accent Packaging, Inc. v. Legett & Platt, Inc., 707 F.3d 1318 (Fed. Cir.

2013), an asserted claim included the functional limitation of a “mount for said

cover permitting the cover to be pivoted away from said knotter to a knotter access

position remote from said wire-maintaining position and though a pivot arc of at

least about 90°.” Id. at 1323. The plaintiff argued that the accused mount

infringed because it would permit rotation through ninety degrees but for a

“SafeLatchTM stop.” Id. at 1327. This Court disagreed, finding that the

“SafeLatchTM stop cannot be ignored when determining whether the [accused

product’s] mount actually permits its cover to be pivoted through a ninety-degree

arc.” Id. (emphasis in original). This Court also rejected the argument that the

SafeLatchTM stop could be removed, finding that the mere possibility of

modification was not enough to establish infringement and noting that the stop

served a critical safety and service function. Id.

Just as in Accent Packaging, the PLL circuitry in Appellees’ accused

products cannot be ignored when determining whether the products actually

permit the claimed frequency variation. As established above, it does not. Nor


39 WEST\281365459

have Appellants offered any evidence that the PLL circuitry can be disabled, much

less removed, which, as established above, it cannot.

Appellants’ reliance on this Court’s decision in Skedco, Inc. v. Strategic

Operations, Inc., 685 F. App’x 956 (Fed. Cir. April 24, 2017), is also misplaced.

In Skedco, the relevant issue was whether the district court’s claim construction

was correct in requiring a pump and a valve to be physically separate structures.

This Court found that it was not, in part because there was no allegation that “the

intrinsic record provides an express definition or disavowal that would limit the

terms ‘pump’ and ‘valve’ to separate structures.” Id. at 959 (emphasis added).

Here, this Court already has found an explicit prosecution history disavowal

that precludes the claimed entire oscillator from requiring a command input to

change frequencies. Moreover, while, as Appellants note, this Court stated in

Skedco that a “pump does not cease moving fluid – i.e., being a pump – just

because an internal valve adjusts fluid flow” (id.), in the present case, the accused

VCO is precluded by the PLL from changing frequency in the absence of a

command input.5

5 Appellants’ statement that the PLL circuitry adjusts the oscillator’s frequency

“afterwards” (Op. Br. at 60) is unexplained, unsupported and incorrect. Appx5289

(Pedrali-Noy Decl. ¶ 8).


40 WEST\281365459

4. There Is No Disputed Question of Fact that Precludes Summary

Judgment

Appellants are incorrect that there are disputed questions of material fact that

preclude summary judgment. Op. Br. at 61-62.

First, Appellants incorrectly contend that the jury’s verdict in the prior HTC

v. TPL case somehow establishes the presence of a disputed issue of material fact.

Id. However, the HTC trial and its verdict are completely irrelevant here because

that trial involved a significantly different claim construction – one that did not

include the Sheets disclaimer, which was the basis for the district court’s order

granting summary judgment in this case. Indeed, Appellants themselves described

the claim construction in the present case as a “stark reversal” of the claim

construction in HTC v. TPL. Appx6725 (First Appeal Br. at 30).

Second, citing paragraphs 33 and 38 of the declaration of their expert,

Dr. Oklobdzija, Appellants argue that the accused oscillators do not require a

command input to change clock frequency because, as “a matter of physics,”

“temperature and voltage changes will change the frequency of the on-chip

oscillators – no command input required.” Op. Br. at 62-63 (citing Appx6539,

Appx6541). However, the district court correctly rejected this wholly conclusory

opinion as being unsupported by any evidence. Appx0006. Indeed, nowhere in

either cited paragraph of his declaration does Dr. Oklobdzija cite any evidence


41 WEST\281365459

whatsoever – both paragraphs simply consist of his unsupported opinions.

Appx6539 at ¶ 33, Appx6541 at ¶ 38. Such naked opinions cannot prevent

summary judgment. Phillips Petroleum Co. v. Huntsman Polymers Corp., 157

F.3d 866, 876 (Fed. Cir. 1998) (holding that a patentee failed, through the

conclusory statements of experts, to raise a genuine issue of material fact

precluding summary judgment); TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360,

1372 (Fed. Cir. 2002) (“Mere denials or conclusory statements are insufficient”).

Moreover, the undisputed evidence addressed at pages 6-12 and 18-21 above

establish that Appellants and Dr. Oklobdzija’s argument is indeed without any

merit, as the accused VCOs do not change frequencies absent a command input.

Appellants assert that Appellees’ summary judgment motion and expert

declaration somehow “tacitly admit” that the VCOs in the accused products “vary

in response to PVT.” Op. Br. at 63. However, once again, Appellants fail to cite

any actual evidence of any such variation ever occurring in the accused products.

Instead, Dr. Subramanian’s undisputed testing (described above at pages 17-19)

establishes that the oscillator frequency does not change in the face of PVT

variations. Moreover, as established above at page 21, the PLL is always active

and keeps the frequency locked, so it is not the case, as Appellants now

hypothesize, that there are actual changes in frequency that need to be corrected.


42 WEST\281365459

Appx5289 (Pedrali-Noy Decl. ¶¶ 7-9); Appx5342 (Subramanian Decl. ¶ 76);

Appx5301-5303 (Lee Decl. ¶¶ 23-27).

D. The Magar Disclaimer Provides An Alternative Basis For Affirming

The District Court’s Judgment

On remand, Appellees moved for summary judgment under both the Magar

disclaimer and the Sheets disclaimer parts of this Court’s claim construction.

Appx5273-5282 (MSJ at 29-38). Once the district court concluded that the

accused products were within the scope of the Sheets disclaimer and therefore did

not infringe, the district court concluded that “there’s no need to discuss whether

the accused oscillators are ‘fixed by any external crystal,’ although it seems likely

that TPL would lose on that question as well.” Appx0008.

Because undisputed evidence shows that the frequencies of the accused

oscillators are fixed by external crystals, the accused oscillators fall within the

scope of the Magar disclaimer in this Court’s construction. Thus, the Magar

disclaimer provides an additional ground for affirming the district court’s summary

judgment order if needed. Bailey v. Dart Container Corp., 292 F.3d 1360, 1362

(Fed. Cir. 2002) (“an appellee can present in this court all arguments supported by

the record and advanced in the trial court in support of the judgment as an appellee,

even if those arguments were rejected or ignored by the trial court”).


43 WEST\281365459

1. Undisputed Evidence Confirms that the VCO Frequency Is Fixed

by an External Crystal in the Accused Products

As shown above, there is no dispute about the structure of the PLLs in the

accused products or how these PLLs operate. In particular, the following facts are

undisputed:

(1) the frequency output by the VCOs in the accused products is a

multiple of the external crystal oscillator’s fixed frequency

(Appx5328 (Subramanian Decl. ¶ 46));

(2) the multiple is determined by the values of programmable divisors in

the PLL (Appx 5327 (Subramanian Decl. ¶ 44));

(3) there is only a minimal variance in the actual frequency output by the

VCOs in the PLLs of the accused products and the amount of

frequency variation is no greater than the amount of frequency

variation exhibited by a crystal oscillator (Appx5435 (Subramanian

Tr. at 1217:25-1218:5); Appx5437 (Subramanian Tr. at 1225:18-19));

and

(4) the frequency of the VCOs will not change beyond such minimal

crystal oscillator-scale variances unless a command input is supplied

to registers associated with the programmable divisors (Appx5328

(Subramanian Decl. ¶ 46)).


44 WEST\281365459

Because the frequency of the VCOs varies no more than the frequency of a

crystal oscillator, and because the frequency of the VCOs in the PLLs is a multiple

of the frequency of an external crystal, the frequency of the VCOs in the PLLs of

the accused products is fixed by an external crystal. Thus, the accused VCOs fall

within the Magar disclaimer. Accordingly, the district court’s judgment can be

affirmed on this alternative ground.

2. Appellants’ Arguments Regarding the Magar Disclaimer Lack

Merit

Appellants make several arguments opposing this alternative ground of

affirmance, none of which has merit. Appellants first argue that the output of the

VCOs is not fixed. Op. Br. at 64. However, that argument is premised upon

Appellants’ assertion that the VCO may be considered in isolation from the rest of

the PLL of which it is a part, which, as discussed above at pages 33-39, is contrary

to this Court’s decisions in Outside the Box, High Tech and Accent Packaging.

Appellants next assert that the Minimal Variations exhibited by the accused

products are sufficient to establish that the output of the VCO is not fixed. Op. Br.

at 64-65. As shown above at pages 15-19, however, the ’336 patent and

prosecution history confirm that such Minimal Variations are well within the

meaning of a fixed frequency.


45 WEST\281365459

Appellants also cite Dr. Oklobdzija’s opinion that a “PLL comparison is

only periodic, not continuous, and may vary or drift between comparisons and

adjustments.” Op. Br. at 64 (citing Appx6540 at ¶ 35) (emphasis added).

However, Dr. Oklobdzija’s speculation as to what “may” happen in a hypothetical

PLL is unsupported by any evidence – much less evidence showing that any such

alleged variation would be greater than that exhibited by a crystal oscillator.

Indeed, Dr. Oklobdzija’s unsupported conjecture is directly contradicted by the

undisputed results of Dr. Subramanian’s testing, which established that any

variance was miniscule and well within the range of crystal frequency variation.

Appellants then argue that the frequency of the VCOs is not fixed by an

external crystal because the VCOs are designed to operate in a range of frequencies

and are set to one of a number of frequencies by the value of the programmable

dividers. Op. Br. at 65. In other words, Appellants argue that the VCOs are not

fixed frequency devices because of Command Input Variations. This argument

ignores the patentees’ own words: a fixed frequency is one “designed to be tightly

controlled and to vary minimally due to variations in manufacturing, operating

voltage and temperature.” Appx2093 (7/3/97 Amendment at 4) (emphasis added).

The VCOs fit this definition of a disavowed fixed frequency device because, as

established above, their frequencies are both tightly controlled and vary minimally


46 WEST\281365459

due to PVT. Moreover, as established above at pages 9 and 10, any VCO output

frequency that is set by the PLL is a direct mathematical function of the frequency

of the crystal oscillator and the values of the programmable divisors. Accordingly,

the ability to set the VCO frequency to a desired frequency does not mean the

frequencies are not fixed by an external crystal.

Appellants also assert that “fixed by an external crystal” language of this

Court’s construction “means that the external crystal actually generates the clock

signal.” Op. Br. at 65. This Court, however, expressly rejected this argument in

the first appeal. There, Appellants argued that “if any disclaimer with respect to

Magar is appropriate, it is one that prohibits a clock signal from being generated

from an off-chip oscillator.” Appx6738 (First Appeal Br. at 43) (emphasis in

original). This Court refused to so limit its construction to the generation of the

clock signal:

Throughout the prosecution history, the patentee argued Magar was

distinguishable for two specific reasons: (1) it discloses a fixed-

frequency crystal rather than a variable frequency ring oscillator, and

(2) it requires an external (off-chip) generator. The patentee made

these distinctions in the first paragraph of its first office action

response addressing Magar, arguing Magar was distinguishable

because “the clock disclosed in the Magar reference is in fact driven

by a fixed frequency crystal, which is external to the Magar integrated

circuit.” J.A. 2091. And the patentee included these distinctions in its

concluding paragraph to a later office action response, summarizing

that Magar was “specifically distinguished from the instant case in

that it is both fixed-frequency (being crystal based) and requires an


47 WEST\281365459

external crystal or external frequency generator.” J.A. 2103 (emphasis

added). The district court’s construction properly includes both of the

patentee’s clear disclaimers.

Tech. Props., 849 F.3d at 1358 (emphasis added). Accordingly, the Court’s Magar

disclaimer does not include only clocks that rely on an external crystal to generate

the clock signal, but also includes clocks whose frequency is fixed by the crystal.

Finally, Appellants argue that the accused VCOs’ frequencies are not fixed

by an external crystal because the signal from the external crystal is not input

directly to the VCO but rather is input to a phase detector in the PLL to generate

the control voltage input to the VCO. Op. Br. at 66 (citing Appx6539-6541

(Oklobdzija Decl. ¶¶ 34-38)). However, as discussed above, the Magar disclaimer

in the Court’s construction is not limited to oscillators that are directly connected

to external crystals or whose frequency is directly produced by the external crystal.

E. There Is No Basis for Revisiting and Revising This Court’s Claim

Construction in the First Appeal

Appellants’ other principal argument on appeal is a belated assault on this

Court’s earlier claim construction decision in this case. Indeed, Appellants attack

not only this Court’s prior decision, but also decades of this Court’s claim

construction jurisprudence concerning prosecution history disclaimer. Appellants’

argument fails for four independent reasons.


48 WEST\281365459

First, Appellants waived the argument by not presenting it in the earlier

claim construction appeal. Claim construction was the sole issue in that appeal. In

fact, Appellants had stipulated to non-infringement under the district court’s

construction so that they could pursue an appeal based solely on claim

construction. Nothing prevented Appellants from presenting their current claim

construction argument at that time. Appellants instead chose not to make the

argument.

Then, after this Court mostly affirmed the district court’s construction,

Appellants declined to pursue any further appellate remedies. Appellants could

have sought panel rehearing, en banc rehearing, and/or Supreme Court review to

the extent they wanted to challenge the Court’s claim construction or its

jurisprudential underpinnings. Appellants chose not to do so. Instead, they

decided to take their chances on remand in the district court by litigating

infringement under this Court’s construction.

Appellants now ask this Court to scrap everything and go back to the

beginning. But this invitation comes far too late. Setting aside the lack of merit in

their argument, Appellants should have presented it when the issue of claim

construction was squarely before this Court. See, e.g., Tronzo v. Biomet, Inc., 236

F.3d 1342, 1349 (Fed. Cir. 2001) (in second appeal to this Court, party’s attack on


49 WEST\281365459

punitive damages award was waived for failure to raise it in first appeal); Doe v.

United States, 463 F.3d 1314, 1327 (Fed. Cir. 2006) (“[A]fter a first appeal, ‘any

issue that could have been but was not raised on appeal is waived . . . .’”) (quoting

United States v. Husband, 312 F.3d 247, 250-51 (7th Cir. 2002)) (second alteration

in original); Designing Health, Inc. v. Collett, 226 F. App’x 976, 982 (Fed. Cir.

Feb. 26, 2007) (unpublished) (“To the extent DH did not raise particular arguments

in support of the jury verdict on damages, or in the alternative in support of a new

trial on damages, during the first appeal in DH I, either in its briefing on appeal or

petition for rehearing, those issues are waived.”). Further compounding their

waiver, Appellants’ new argument depends on materials that they never made part

of the record in the district court (Op. Br. at 22-23 & n.52, 54-56), and this Court

already has denied Appellants’ request to take judicial notice in this appeal (Dkt.

No. 58). Appellants’ attempt to reopen these already-decided matters is a classic

case of waiver and is both wasteful and unfair to the courts and Appellees.

Unsupported by any authority, Appellants play the “we have new lawyers”

card to try to reset the table. But hiring new counsel on remand is neither a

justification nor an excuse. Appellants’ new argument is waived, and this Court

need not even consider it.


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Second, in addition to the garden-variety waiver that occurred here, the law

of the case doctrine bars consideration of Appellants’ new argument. This Court

has routinely held that its decision in an earlier appeal ordinarily binds the panel in

a subsequent appeal in the same case. See, e.g., E-Pass Techs., Inc. v. 3COM

Corp., 473 F.3d 1213, 1219 (Fed. Cir. 2007) (“A claim construction articulated by

a prior panel decision of this court ordinarily remains the law of the case unless it

is in conflict with a subsequent decision by this court sitting en banc or by the

Supreme Court.”); Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d

1309, 1315 (Fed. Cir. 1998) (“In the previous appeal, this court established the

construction of all the claim terms in dispute. . . . Thus, claim construction need

not be repeated here, as our prior construction is law of the case.”) (citation

omitted); Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320, 1324

(Fed. Cir. 1987) (“To the extent that the underlying facts are based on identical

premises, as is here the case, the prior findings and the claim construction based

thereon are the law of the case. They are not available for redetermination.”).

Appellants offer no good reason why this rule does not apply here too.

Appellants’ new claim construction argument does not fall within any

exception to the law of the case doctrine. Such “exceptional circumstances” may

exist when “the evidence on a subsequent trial was substantially different,


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controlling authority has since made a contrary decision of the law applicable to

such issues, or the decision was clearly erroneous and would work a manifest

injustice.” Smith Int’l, Inc. v. Hughes Tool Co., 759 F.2d 1572, 1576 (Fed. Cir.

1985) (internal quotation marks omitted). None of these exceptions applies.

Appellants do not even purport to rely on the first two exceptions. They do

not and cannot identify “evidence on a subsequent trial [that] was substantially

different.” Id. Nor do they cite any “controlling authority [that] has since made a

contrary decision of the law applicable to such issues.” Id. Again, the only change

Appellants assert is the identity of their new counsel, and that is irrelevant. Simply

making new arguments with new attorneys cannot overcome the law of the case.

Regarding the third exception, Appellants do not show clear error or

manifest injustice—much less both, as this exception requires. See id. For the

reasons given in the Court’s opinion in the first appeal and Appellees’ briefing and

oral argument in the first appeal, this Court correctly affirmed the district court’s

ruling on the Magar disclaimer. Likewise, while the Court made a minor

modification to the district court’s ruling on the Sheets disclaimer, it correctly

agreed with most of that ruling. Nor have Appellants demonstrated that adherence

to the prior panel’s decision would be manifestly unjust. Appellants simply wish

they had obtained a better result in the first appeal, and the additional argument


52 WEST\281365459

they now make could just as easily have been made then. As a result, Appellants

have not provided any legitimate reason to depart from the law of the case in this

second appeal.

Third, Appellants’ new claim construction argument is beyond the purview

of a panel of this Court. Appellants’ attack on the prior claim construction is based

entirely on its assertion that numerous of this Court’s panel and en banc disclaimer

precedents should be discarded. Even if Appellants’ view of the disclaimer

doctrine had any merit (it does not), only the en banc Court or the Supreme Court

can overrule this Court’s precedents. See Deckers Corp. v. United States, 752 F.3d

949, 965 (Fed. Cir. 2014) (explaining that panels do not have the authority to

overrule prior precedential panel decisions unless the en banc Court or the

Supreme Court overturns the prior decision). And even then, Appellants’ waiver

in failing to pursue these additional appellate remedies after the first appeal will

foreclose these avenues of review after this appeal concludes.

Fourth and finally, to the extent this Court even considers the substance of

Appellants’ new argument in this second appeal, the argument lacks merit. “It is,

of course, well settled that an invention is construed not only in light of the claims,

but also with reference to the file wrapper or prosecution history in the Patent

Office.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33 (1966).


53 WEST\281365459

Nothing in the Supreme Court cases Appellants cite holds that a disclaimer cannot

be based on clear and unmistakable disavowals of claim scope in arguments made

to overcome prior art rejections. See, e.g., Graham, 383 U.S. 1; Goodyear Dental

Vulcanite Co. v. Davis, 102 U.S. 222 (1880). And the Court correctly applied the

rules of disclaimer here for all the reasons given in Appellees’ briefing and this

Court’s decision in the first appeal. Appellants’ invitation to revisit and revise this

Court’s prior claim construction thus should be rejected.

CONCLUSION

There is no dispute of material fact. As a matter of law, the accused

products do not infringe the asserted claims. And there is no legitimate reason to

undo the Court’s claim construction from the first appeal. The judgment of the

district court therefore should be affirmed.

Dated: July 3, 2018

DLA PIPER LLP (US)

/s/ Mark D. Fowler

Mark D. Fowler

Aaron Wainscoat

Erik R. Fuehrer



Tel. (650) 833-2000

Fax (650) 833-2001


54 WEST\281365459

James M. Heintz

11911 Freedom Dr.

Reston, VA 20190

Tel. (703) 733-4000

Fax (703)733-5000

Robert C. Williams

401 B Street, Suite 1700

San Diego, CA 92101

Tel. (619) 699-2700

Fax (619) 699-2701


SAMSUNG ELECTRONICS CO.,

LTD. and SAMSUNG ELECTRONICS

AMERICA, INC.

MCDERMOTT WILL & EMERY

LLP

/s/ Charles M. McMahon

Charles M. McMahon

[email protected]

Hersh H. Mehta

[email protected]

MCDERMOTT WILL & EMERY LLP


Chicago, IL 60606

Tel. (312) 372-2000

Fax (312) 984-7700


ZTE CORPORATION and ZTE (USA)

INC.


55 WEST\281365459

STEPTOE & JOHNSON LLP

/s/ Timothy C. Bickham

Timothy C. Bickham

Steptoe & Johnson LLP



Tel. (202) 429-5517

Fax (202) 429-3902

Michael E. Flynn-O’Brien

One Market Street

Steuart Tower, Suite 1800

San Francisco, CA 94105

Tel: (415) 365-6700

Facsimile: (415) 365-6699


HUAWEI TECHNOLOGIES CO.,

LTD., HUAWEI DEVICE CO., LTD.,

HUAWEI DEVICE USA INC.,

FUTUREWEI TECHNOLOGIES, INC.,

and HUAWEI TECHNOLOGIES USA

INC.


/s/ Joseph B. Warden

Joseph B. Warden

[email protected]

222 Delaware Avenue



Telephone: (302) 652-5070

Facsimile: (302) 652-0607


56 WEST\281365459

Christian A. Chu (CA SBN 218336)

[email protected]

1000 Maine Ave. SW


Telephone: (202) 783-5070

Facsimile: (202) 783-2331




COOLEY LLP

/s/ Stephen R. Smith

Stephen R. Smith

[email protected]

COOLEY LLP

1299 Pennsylvania Ave., NW

Suite 700


Telephone: (703) 456-8000

Facsimile: (703) 456-8100

Matthew J. Brigham

[email protected]

COOLEY LLP

3175 Hanover Street

Palo Alto, CA 94304-1130

Telephone: (650) 843-5000

Facsimile: (650) 849-7400


NINTENDO CO., LTD and NINTENDO

OF AMERICA INC.


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CERTIFICATE OF SERVICE

I hereby certify that, on July 3, 2018, I electronically filed the foregoing

NON-CONFIDENTIAL DEFENDANTS-APPELLEES’ RESPONSE BRIEF with

the Court’s CM/ECF filing system, which constitutes service, pursuant to Fed. R.

App. P. 25(c), Fed. Cir. R. 25(a), and the Court’s Administrative Order Regarding

Electronic Case Filing 6(A) (May 17, 2012).

In addition, a paper copy of the confidential version of the brief was served

on counsel for all other parties via UPS overnight delivery at the addresses below:

Denise M. De Mory

Henry C. Bunsow

Aaron R. Hand

Lauren N. Robinson

BUNSOW DE MORY LLP

701 El Camino Real

Redwood City, CA 94063

Attorneys for Plaintiffs-Appellants TECHNOLOGY PROPERTIES LIMITED

LLC, PHOENIX DIGITAL SOLUTIONS, LLC, PATRIOT SCIENTIFIC CORP.

Charles M. McMahon

MCDERMOTT WILL & EMERY LLP


Chicago, IL 60606

Attorneys for Defendants-Appellees ZTE CORPORATION and ZTE (USA) INC.

Timothy C. Bickham

Steptoe & Johnson LLP




58 WEST\281365459


HUAWEI TECHNOLOGIES CO., LTD., HUAWEI DEVICE CO., LTD.,

HUAWEI DEVICE USA INC., FUTUREWEI TECHNOLOGIES, INC., and

HUAWEI TECHNOLOGIES USA INC.

Joseph B. Warden


222 Delaware Avenue






Stephen R. Smith

COOLEY LLP

1299 Pennsylvania Ave., NW

Suite 700



NINTENDO CO., LTD and NINTENDO OF AMERICA INC.

By: /s/ Mark D. Fowler

Mark D. Fowler

DLA Piper LLP (US)



Tel. (650) 833-2000

Attorneys for Samsung

Electronics Co., Ltd. and

Samsung Electronics America,

Inc.


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CERTIFICATE OF COMPLIANCE FOR BRIEF CONTAINING

MATERIAL SUBJECT TO A PROTECTIVE ORDER

This brief complies with the limitations set forth in Federal Circuit Rule

28(d) for briefs containing material subject to a protective order and contains only

15 words (including numbers) marked as confidential.


Mark D. Fowler

DLA Piper LLP (US)



Tel. (650) 833-2000




Inc.


60 WEST\281365459

CERTIFICATE OF COMPLIANCE

This brief complies with the type-volume limitation of Federal Rule of

Appellate Procedure 32 and Federal Circuit Rule 32. This brief contains 11,632

words, excluding the portions of the brief exempted by Federal Rule of Appellate

Procedure 32 and Federal Circuit Rule 32. This brief has been prepared in a

proportionally spaced typeface using Microsoft Word 2010 in 14-point Times New

Roman.


Mark D. Fowler

DLA Piper LLP (US)



Tel. (650) 833-2000




Inc.


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