NXP USA Inc v. Impinj Inc

— 1 — — 2 — — 3 — — 4 — — 5 — UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT SEATTLE — 7 — NXP USA, INC., and NXP B.V., CASE NO. 2:20-cv-01503-JHC — 8 — Plaintiffs, ORDER MODIFYING CLAIM — 9 — CONSTRUCTION v. — 10 — IMPINJ, INC., — 11 — Defendant. — 12 — — 13 — — 14 — I. — 15 — INTRODUCTION — 16 — This matter comes before the Court sua sponte. On November 4, 2022, the Court issued — 17 — a claim construction order. See Dkt. # 247. The Court construed several terms in U.S. Patent — 18 — Number 7,347,097 (“the ’097 Patent”). Among those was the term “voltage-raising means that — 19 — are arranged to raise the voltage value of the control signal.” The Court construed the term to be — 20 — a means-plus-function term. Dkt. # 247 at 33–39. The Court stated that the function was — 21 — “raising the voltage value of the control signal,” and the corresponding structure was “a charge — 22 — pump or the float-based structure described at 2:43–48 of the ’097 Patent” and equivalents — 23 — thereof. Id. — 24 — 1 After developing a deeper understanding of the technology at issue and Federal Circuit 2 case law, the Court finds it necessary to modify that construction. The Court concludes that the 3 “voltage-raising means” term is not a means-plus-function term, and that it should be construed 4 as “a circuit that raises the voltage value of the control signal.” 5 II. 6 LEGAL PRINCIPLES 7 A. General Claim Construction Principles 8 “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention 9 to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303 , 10 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 11 Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)); see also Vitronics Corp. v. Conceptronic, Inc., 90 12 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves . . . to define 13 the scope of the patented invention.”). 14 When construing a patent claim, the words of the claim “are generally given their 15 ordinary and customary meaning.” Phillips, 415 F.3d at 1312 (quoting Vitronics, 90 F.3d at 16 1582). The “ordinary and customary meaning” of a term is the meaning of the words as 17 understood by a person of ordinary skill in the art (“POSITA”) at the time of the invention. Id. at 18 1313. Although words in a claim are generally given their ordinary meaning, the Federal Circuit 19 has recognized “two exceptions to this general rule: 1) when a patentee sets out a definition and 20 acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term 21 either in the specification or during prosecution.” Thorner v. Sony Comput. Ent. Am. LLC, 669 22 F.3d 1362, 1365 (Fed. Cir. 2012). For the patentee’s unique definition to govern, the patentee 23 must “clearly set forth a definition of the disputed claim term other than its plain and ordinary 24 meaning. Id. (internal quotation marks and citation omitted). The “standard for disavowal of 1 claim scope is similarly exacting.” Id. at 1366 . “Absent a clear disavowal in the specification or 2 the prosecution history, the patentee is entitled to the full scope of its claim language.” Home 3 Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed.Cir.2004). 4 To determine the meaning of a disputed term, courts mainly rely on “intrinsic” evidence: 5 the claim language, the written description in the specification, and the patent’s prosecution 6 history. Phillips, 415 F.3d at 1311–17. A court’s analysis begins with the language in the 7 claims. See id. at 1314; Innova/Pure Water, 381 F.3d at 1116 (“[C]laim construction analysis 8 must begin and remain centered on the claim language itself.”). But claim terms are not to be 9 read in a vacuum. Rather, claims “are part of a fully integrated written instrument . . . consisting 10 principally of a specification that concludes with the claims.” Phillips, 415 F.3d at 1315 (citation 11 and internal quotation marks omitted); see also id. at 1313 . The specification is particularly 12 important to claim construction and is often “the single best guide to the meaning of a disputed 13 term.” Id. at 1315 (quoting Vitronics, 90 F.3d at 1582). This is because the specification “aids 14 in ascertaining the scope and meaning of the claims.” Id. (quoting Standard Oil Co. v. Am. 15 Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)). Thus, courts “rely heavily” on the 16 specification. Id. at 1317. 17 Courts often struggle when using the specification to guide the claim construction 18 inquiry. Id. at 1323. On the one hand, courts rely on the specification to help determine the 19 meaning of a disputed term. Id. On the other hand, the Federal Circuit has repeatedly warned 20 that a court may not read limitations from the specification into the claim. Id.; see also Laitram 21 Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (noting that it is a “well-established 22 principle that a court may not import limitations from the written description into the claims”); 23 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 24 2001) (observing that one of the “cardinal sins of patent law” is “reading a limitation from the 1 written description into the claims”). The “distinction between using the specification to 2 interpret the meaning of a claim and importing limitations from the specification into the claim 3 can be a difficult one to apply in practice.” Phillips, 415 F.3d at 1323 . But the Federal Circuit 4 has explained that “the line between construing terms and importing limitations can be discerned 5 with reasonable certainty and predictability if the court’s focus remains on understanding how a 6 person of ordinary skill in the art would understand the claim terms.” Id. 7 In addition to considering intrinsic evidence (like the claim language and specification), 8 courts may also rely on “extrinsic” evidence. Extrinsic evidence “consists of all evidence 9 external to the patent and prosecution history, including expert and inventor testimony, 10 dictionaries, and learned treatises.” Markman v. Westview Instruments, Inc., 52 F.3d 967 , 980 11 (Fed. Cir. 1995), aff’d, 517 U.S. 370 , (1996) (citation omitted). While extrinsic evidence may be 12 useful, it is generally given less weight than intrinsic evidence. Phillips, 415 F.3d at 1317 . 13 The construction of a patent’s claims is a question of law to be decided by the court. 14 Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 , 321 (2015); Markman v. 15 Westview Instruments, Inc., 517 U.S. 370, 390 (1996). 16 B. Principles for Means-Plus-Function Claims — 17 — Under 35 U.S.C.§ 112, ¶ 6 (now codified at 35 U.S.C. § 112 (f)),1 claims may be drafted 18 in a “means-plus-function” format in which the claim “recites a function to be performed rather 19 than definite structure or materials for performing that function.” Lockheed Martin Corp. v. — 20 — — 21 — — 22 — 1 The America Invents Act (“AIA”) amended and reorganized section 112, moving 35 U.S.C. 112, ¶ 6 to 35 U.S.C. § 112 (f). But the AIA did not substantively change the means-plus-function portion — 23 — of the statute. Because the patents at issue were filed before the AIA took effect, this order refers to the pre-AIA version of Section 112. See Williamson v. Citrix Online, LLC, 792 F.3d 1339 , 1343 n.2 (Fed. 24 Cir. 2015) (en banc). 1 Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003) (citing 35 U.S.C. § 112 , ¶ 6). By 2 allowing inventors to draft claims in this manner, 3 Congress struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing 4 that function, while placing specific constraints on how such a limitation is to be construed, namely, by restricting the scope of coverage to only the structure, 5 materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof. — 6 — Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). — 7 — Interpreting a means-plus-function limitation is a multi-step process. A court must first — 8 — determine whether the term is drafted in a means-plus-function format such that § 112, ¶ 6 — 9 — applies. MTD Prod. Inc. v. Iancu, 933 F.3d 1336, 1344 (Fed. Cir. 2019); Williamson, 792 F.3d 10 at 1348 . The presence of the word “means” in a claim creates a rebuttable presumption that the — 11 — claim is governed by § 112, ¶ 6. See Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 , 1372 (Fed. — 12 — Cir. 2020) (“We presume that claim terms with the word ‘means’ invoke § 112(f)”); Williamson, — 13 — 792 F.3d at 1348. But courts must not reflexively “evaluate[] form over substance when — 14 — evaluating whether a claim limitation invokes § 112, para. 6.” Williamson, 792 F.3d at 1348 . — 15 — The Federal Circuit has explained: — 16 — In making the assessment of whether the limitation in question is a means-plus17 function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word 18 “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. — 19 — Id. (citation omitted); see also MTD Prods., 933 F.3d at 1344 (“As part of this step, we consider — 20 — whether the claim limitation connotes ‘sufficiently definite structure’ to a person of ordinary skill — 21 — in the art.”). “To determine whether a claim recites sufficient structure, it is sufficient if the — 22 — claim term is used in common parlance or by persons of skill in the pertinent art to designate — 23 — structure, even if the term covers a broad class of structures and even if the term identifies the — 24 — 1 structures by their function.” Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2 2017) (citation and quotation marks omitted); see also MTD Prods., 933 F.3d at 1344 ; Dyfan, 3 LLC v. Target Corp., 28 F.4th 1360 , 1365–66 (Fed. Cir. 2022). 4 III. 5 DISCUSSION 6 A. Background on the ’097 Patent 7 Many data carriers contain storage systems used to store information temporarily. These 8 carriers can, for example, temporarily store an indication of successful communication with a 9 communication station. Dkt. # 137 at 21. The information is stored and represented “by a value 10 of an information voltage that arises at the capacitor.” ’097 Patent, 1:45–47. The ’097 Patent 11 identifies a problem in the prior art: The information voltage would continuously decline due to 12 “unavoidable leakage currents in the circuit.” Id. at 1:62–2:1. This decline in voltage would 13 lead to an “unsatisfactory situation” because the information was “no longer able to be evaluated 14 after only a short period of time.” Id. at 2:2–7. 15 The ’097 Patent describes an invention that purports to solve this problem. The invention 16 described by the ’097 Patent provides “a substantially longer period of time during which the 17 stored information can be ascertained with high reliability.” Id. at 2:34–36. This also allows the 18 information to remain accessible if a brief supply-voltage failure occurs. Id. at 2:35–42. The 19 patent achieves this in part by adding a “voltage-raising means” to the “information-voltage 20 generating means.” Id. at 2:13–23; see also Dkt. # 135 at 17. 21 The ’097 Patent describes a data carrier that temporarily stores information capacitively. 22 ’097 Patent, 1:1–18. The information is represented by the value of an “information voltage,” 23 which is produced by “information-voltage generating means.” Id. The specification describes 24 an embodiment in which the “information-voltage generating means” receive a “control signal” 1 and are further comprised of a “charging-current generating stage,” a “voltage-raising means,” 2 and a voltage-limiting means. Id. at 3:60–4:14. 3 Claim 1 of the ’097 Patent exemplifies the patent’s use of the “voltage-raising means” 4 term. That claim describes “information-voltage generating means . . . that are arranged to 5 generate the information voltage by using the control signal, characterized in that the 6 information-voltage generating means have voltage-raising means that are arranged to raise the 7 voltage value of the control signal.” ’097 Patent, 8:66–9:5 (emphasis added). 8 The parties asked the Court to construe the term “voltage-raising means that are arranged 9 to raise the voltage value of the control signal.” In its initial claim construction order, the Court 10 construed the term to be a means-plus-function term. Dkt. # 247 at 33–39. The Court stated that 11 the function was “raising the voltage value of the control signal,” and the corresponding structure 12 was “a charge pump or the float-based structure described at 2:43–48 of the ’097 Patent” and 13 equivalents thereof. Id. 14 B. Modification of a Court’s Construction 15 The Court finds it appropriate to revisit its prior construction. The Federal Circuit 16 permits courts to modify claim construction throughout litigation: “[Courts] may engage in a 17 rolling claim construction, in which the court revisits and alters its interpretation of the claim 18 terms as its understanding of the technology evolves. This is particularly true where issues 19 involved are complex, either due to the nature of the technology or because the meaning of the 20 claims is unclear from the intrinsic evidence.” Jack Guttman, Inc. v. Kopykake Enterprises, Inc., — 21 — 302 F.3d 1352, 1361 (Fed. Cir. 2002) (citation omitted); see also Conoco, Inc. v. Energy & Env’t 22 Int’l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006) (“[A] district court may engage in claim 23 construction during various phases of litigation, not just in a Markman order.”). The Federal 24 Circuit has affirmed a district court’s sua sponte modification of a claim construction decision in 1 a summary judgment order. See Level Sleep LLC v. Sleep No. Corp., No. 2020-1718, 2021 WL 2 2934816, at *3 (Fed. Cir. July 13, 2021) (“[A] district court may (and sometimes must) revisit, 3 alter, or supplement its claim constructions . . . to the extent necessary to ensure that final 4 constructions serve their purpose of genuinely clarifying the scope of claims for the finder of 5 fact.” (quoting In re Papst Licensing Digit. Camera Pat. Litig., 778 F.3d 1255, 1261 (Fed. Cir. 6 2015)); id. (“[T]he district court was well within its power to clarify, supplement, and even alter 7 its construction”). 8 With the benefit of additional briefing about circuit technology, greater understanding of 9 the way a POSITA would discuss the relevant circuit components, and increased familiarity with 10 Federal Circuit case law, the Court concludes that modification of its claim construction is 11 appropriate and necessary. The Court no longer believes that this term is a means-plus-function 12 term governed by § 112, ¶ 6. And while the Court initially believed that the “voltage-raising 13 means” term should be construed similarly to the “information-voltage generating means” term 14 (another term in the ’097 Patent that the Court construed as a means-plus-function limitation), 15 the Court now understands that the “voltage-raising means” term conveys structure in a way that 16 “information-voltage generating means” does not. As explained below, the Court understands 17 the “voltage-raising means” term to refer to a sufficiently definite class of structures: circuit 18 components that raise a voltage. 19 C. Revised Construction of the “voltage-raising means” Term 20 During claim construction, the parties disputed the meaning of the term “voltage-raising 21 mean that are arranged to raise the voltage value of the control signal.” The parties disagreed 22 about whether it was a means-plus-function term subject to § 112, ¶ 6. Impinj said that the term 23 is governed by § 112, ¶ 6. Dkt. # 135 at 21. NXP disagreed, arguing that the term be given its 24 plain and ordinary meaning, which it interpreted to be “a circuit that raises the voltage value of 1 the control signal.” Dkt. # 137 at 24. While the Court initially sided with Impinj on this 2 question, it now believes NXP has the better argument. Accordingly, the Court now holds that 3 the term is not subject to § 112, ¶ 6, and construes the term to mean “a circuit that raises the 4 voltage value of the control signal.” 5 The term includes the word “means,” which creates a presumption that the limitation is a 6 means-plus-function claim subject to § 112, ¶ 6. Egenera, 972 F.3d at 1372. But the Federal 7 Circuit has cautioned that courts must not reflexively “evaluate[] form over substance when 8 evaluating whether a claim limitation invokes § 112, para. 6.” Williamson, 792 F.3d at 1348 . 9 The Federal Circuit has explained: 10 In making the assessment of whether the limitation in question is a means-plusfunction term subject to the strictures of § 112, para. 6, our cases have emphasized 11 that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary 12 skill in the art to have a sufficiently definite meaning as the name for structure. 13 Id. (citation omitted). 14 And importantly, “[t]o determine whether a claim recites sufficient structure, it is 15 sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art 16 to designate structure, even if the term covers a broad class of structures and even if the term 17 identifies the structures by their function.” Skky, 859 F.3d at 1019 (emphasis added) (citation 18 and quotation marks omitted). That is, “a claim term ‘need not connote a single, specific 19 structure,’ and may instead ‘describe a class of structures’ and still recite ‘sufficiently definite 20 structure’ to not invoke § 112 ¶ 6.” Dyfan, 28 F.4th at 1365–66. 21 The Court concludes that a POSITA would understand the “voltage-raising means” term 22 as referring to sufficiently definite structure. The term refers to the class of circuit components 23 (tangible structure) used to raise the voltage within a circuit. Cf. Inventio AG v. ThyssenKrupp 24 Elevator Americas Corp., 649 F.3d 1350, 1358 (Fed. Cir. 2011) (“In past cases, we have 1 concluded that a claimed ‘circuit,’ coupled with a description of the circuit’s operation in the 2 claims, connoted sufficiently definite structure to skilled artisans to avoid the application of § 3 112, ¶ 6.” (overruled on other grounds by Williamson, 792 F.3d 1339 )); Apex Inc. v. Raritan 4 Comput., Inc., 325 F.3d 1364 , 1373–74 (Fed. Cir. 2003) (holding that even the term “circuit” 5 “itself connotes some structure”). The language in the claim not only limits the types of circuits 6 that qualify (only circuit components that raise a voltage), but also provides some rudimentary 7 explanation of the way these voltage-raising components interface with the rest of the circuit 8 (connected in some way to the control signal). 9 As Dr. Madisetti explained, “a POSITA would have understood,” for example, “that 10 voltage values could be raised using a charge pump or a voltage multiplier that was well known — 11 — in the art” Dkt. # 137-4 at 41.2 No doubt, other voltage-raising components exist, too, as the 12 Court has learned throughout this litigation. But a term can convey adequate structure even if it 13 covers a “class of structures.” Skky, 859 F.3d at 1019 (citation omitted). Here, the term does not 14 describe an infinitely malleable and open-ended category of any device or apparatus, however 15 conceived, that could raise a voltage. Rather, the term connotes a finite list of possible 16 structures, limited only to certain circuit components (like a charge pump or voltage multiplier). 17 Simply put, there are known circuit components that a POSITA might colloquially call “voltage 18 raisers” or “voltage-raising” components. This is enough to convey structure because it serves as 19 a name for a type of structure. Williamson, 792 F.3d at 1349 (“The standard is whether the 20 words of the claim are understood by persons of ordinary skill in the art to have a sufficiently 21 definite meaning as the name for structure.”). — 22 — 2 Impinj did not submit a competing expert declaration. While the Court initially gave Dr. — 23 — Madisetti’s statements limited weight because they were somewhat conclusory, his explanation accords with the Court’s improved understanding of circuit design and the language used by persons skilled in 24 this field. Therefore, the Court gives Dr. Madisetti’s testimony some weight in evaluating the claim term. 1 And it does not matter that this structure is conveyed, in part, by functional language. 2 Many structures derive their names from the functions they serve. See Greenberg v. Ethicon 3 Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from 4 the functions they perform. . . . What is important is not simply that a [term] is defined in terms 5 of what it does, but that the term, as the name for structure, has a reasonably well understood 6 meaning in the art.”); Skky, 859 F.3d at 1019 (“[I]t is sufficient if the claim term is used in 7 common parlance or by persons of skill in the pertinent art to designate structure, . . . even if the 8 term identifies the structures by their function.” (emphasis added) (citation omitted)). 9 To be sure, today’s order necessarily requires repudiation of some of the reasoning found 10 in the Court’s previous claim construction order. Portions of this order may contradict portions 11 of the Court’s previous claim construction order. But with the benefit of a deeper understanding 12 of the technology at issue, additional insight about the way a POSITA would discuss circuit 13 components, and an improved grasp of Federal Circuit case law, the Court concludes that this is — 14 — the better construction of the term.3 15 Accordingly, the Court holds that “voltage-raising means that are arranged to raise the 16 voltage value of the control signal” is not a means-plus-function limitation. The Court adopts NXP’s construction and construes the term to mean “a circuit that raises the voltage value of the control — 17 — signal.” — 18 — D. Other Issues — 19 — The Court takes this opportunity to address a few other related issues. — 20 — First, as will be further explained in a forthcoming order, the Court will grant the portion — 21 — of Impinj’s motion to exclude Dr. Madisetti (Dkt. # 274) regarding NXP’s ’097 infringement — 22 — — 23 — 3 To avoid any doubt, this order fully replaces all reasoning concerning the “voltage-raising 24 means” term found in the prior order. l theory based on a rectifier and level shifter combination. NXP’s infringement contentions did 2 || not disclose a rectifier and level shifter combination as satisfying the “voltage-raising means” 3 limitation. Its infringement contentions focused nearly exclusively on a level shifter. And 4 || because the Court has now adopted NXP’s preferred construction, NXP cannot justify its failure 5 || to disclose its combination-based theory in its infringement contentions. Accordingly, NXP 6 cannot rely on the rectifier and level shifter combination to satisfy this claim limitation. The 7 parties should take this ruling into account in any future filings. 8 Second, the Court recognizes that its decision today may affect the parties and the case in g various ways. After the parties have met and conferred, the Court is amenable to a telephonic 10 status conference about how, if at all, this decision affects the litigation as a whole. The parties 11 are advised to email Courtroom Deputy Ashleigh Drecktrah if they wish to arrange for a 12 || telephonic conference. 13 IV. 14 CONCLUSION 15 For the reasons above, the Court modifies its construction of the “voltage-raising means” 16 || term of the °097 Patent. The Court does not construe the term as a means-plus-function term, 17 and interprets it to mean “a circuit that raises the voltage value of the control signal.” 18 Dated this 6th day of March, 2023. 19 CJok 4. Chur 20 John H. Chun United States District Judge — 21 — — 22 — — 23 — — 24 — ORDER MODIFYING CLAIM