Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 1 of 7 Page ID#: 5765
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF OREGON
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`PORTLAND DIVISION
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`MENTOR GRAPHICS CORPORATION,
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`Plaintiff,
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`v.
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`EVE-USA, INC., et al.,
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`Defendants.
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`MOSMAN, J.,
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`No. 3:10-cv-00954-MO
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`OPINION AND ORDER
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`Plaintiff, Mentor Graphics Corp., brings this lawsuit alleging that defendants, EVE-USA,
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`Inc. and Emulation and Verification Engineering, S.A., are infringing claims 1–8 of its assigned
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`United States Patent Number 6,876,962 (“‘962”). After reviewing plaintiff’s opening claim
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`construction brief [151], defendants’ opening brief [173], and both parties’ responses [186]
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`[187], I conducted a Markman Hearing [233] on June 11, 2012.
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`Instead of reiterating my analysis with regard to the terms discussed in length at the
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`Markman Hearing, I have merely provided my construction as stated on the record and refer the
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`parties to the transcript of the proceedings in support. (See Markman Hearing Tran. [238]). The
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`remainder of this Opinion addresses defendants’ argument that claim terms 1(b), 4(b), 7(3-5),
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`and 8(3-5) are subject to 35 U.S.C. § 112, ¶ 6 (“§ 112, ¶ 6”), as well as my reasoning in support
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`1 – OPINION AND ORDER
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`Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 2 of 7 Page ID#: 5766
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`of my construction of the claim term “configuration resources.” Also, I note that the parties were
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`able to resolve their dispute concerning the claim term “netlist” by Joint Stipulation [242]. With
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`that said, I construe the disputed claim terms, phrases, and clauses identified in ‘962 for claim
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`construction by the parties as follows.
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`Term
`“reconfigurable emulation
`resources”
`“circuit design(s)”
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`“configuration information”
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`“emulation”/“emulating”
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`“emulator”
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`“netlist”
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`CLAIM CONSTRUCTION
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`Construction
`Reconfigurable hardware used for emulation.
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`A design for an integrated circuit.
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`Information that is transmitted to and used to configure
`reconfigurable emulation resources.
`Reproducing the operation of a circuit design through steps
`including mapping the circuit design into hardware.
`A system capable of reproducing the operation of a circuit design
`through steps including mapping the circuit design into hardware.
`A list of logic and memory elements and their inputs, outputs, and
`interconnects.
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`DISCUSSION
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`1. 35 U.S.C. § 112, ¶ 6
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`Defendants argue that ‘962 claims 1(b), 4(b), 7(3-5), and 8(3-5) are subject to § 112, ¶ 6.1
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`Specifically, defendants assert that claims 1(b) and 4(b) are means-plus-function claims and that
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`claims 7(3-5) and 8(3-5) are step-plus-function claims. Defendants argue that because these
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`claims are subject to § 112, ¶ 6, they are invalid for indefiniteness, because the ‘962 patent
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`specification does not describe a structure that corresponds to the claimed function in claims 1(b)
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`and 4(b), and because claims 7(3-5) and 8(3-5) do not recite how the claimed functions are
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`accomplished.
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`1 35 U.S.C. § 112, ¶ 6, states: “An element in a claim for a combination may be expressed as a means or step for
`performing a specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification and
`equivalents thereof.”
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`2 – OPINION AND ORDER
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`Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 3 of 7 Page ID#: 5767
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`a. Means-Plus-Function
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`§ 112, ¶ 6 applies “only to purely functional limitations that do not provide the structure
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`that performs the recited function.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir.
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`2005). The question of “[w]hether certain claim language invokes § 112, ¶ 6 is an exercise in
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`claim construction.” Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350,
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`1356 (Fed. Cir. 2011). “The use of the term ‘means’ triggers a rebuttable presumption that § 112,
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`¶ 6 governs the construction of the claim term.” Id. (citing TriMed, Inc. v. Stryker Corp., 514
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`F.3d 1256, 1259 (Fed. Cir. 2008)). On the other hand, there is a presumption that the limitation
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`“does not invoke § 112, ¶ 6” if the claim language does not recite the term “means.” Id. The
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`“presumption flowing from the absence of the term ‘means’ is a strong one that is not readily
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`overcome.” Id. Because ‘962 claims 1(b) and 4(b) do not recite the term “means,” there is a
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`strong presumption that § 112, ¶ 6 does not apply in this case
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`Defendants can overcome the presumption if they demonstrate that “the claim term fails
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`to ‘recite sufficiently definite structure’ or else recites a ‘function without reciting sufficient
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`structure for performing that function.’” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
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`1369 (Fed. Cir. 2002) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
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`Claims 1(b) and 4(b) recite the term “computer,” which defendants assert is a generic term that
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`the written description fails to clearly limit structurally. Plaintiff argues that ‘962 claims 1(b) and
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`4(b) provide sufficient structure: a specially configured computer. Defendants advance two
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`arguments in support of their attempt to overcome the presumption. First, they argue that this
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`case is easily distinguishable from Inventio, in which the Federal Circuit held that the term
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`“computing unit” connoted sufficiently definite structure to those of skill in the art. See Inventio
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`AG, 649 F.3d at 1359–60. Second, they assert that “computer” cannot connote sufficiently
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`3 – OPINION AND ORDER
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`Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 4 of 7 Page ID#: 5768
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`definite structure to those of skill in the art, because the language that plaintiff asserts provides
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`structure is the same language that makes ‘962 novel.
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`First, I disagree that the term “computer” as used in ‘962 is more structurally devoid than
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`the term “computing unit” in Inventio such that this case is distinguishable. ‘962 claims 1(b) and
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`4(b) recites that the “computer” is “configured to generate configuration information.” ‘962
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`explains that the computer is configured with a program that generates the configuration
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`information, which are the bits that go into the field programmable gate arrays (“FPGA”)
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`contained in the emulator. The ‘962 specification elaborates that while the way in which the
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`information is programmed into the FPGAs is unique, the information is still generated in the
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`same way such that one in the art would reasonably understand the computer’s role in the
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`process. Defendants’ second argument, that novelty alone subjects these claims to § 112, ¶ 6,
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`fails for this reason. The term “computer” coupled with the described program, therefore,
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`connotes sufficiently definite structure to those of skill in the art under Federal Circuit law.
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`For all of these reasons, I find that defendants failed to overcome their heavy burden of
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`showing that term “computer” as used in ‘962 claims 1(b) and 4(b) is so structurally devoid that
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`the claims should be rewritten in means-plus-function format. Accordingly, I find that § 112, ¶ 6
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`does not apply to claims 1(b) and 4(b).
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`b. Step-Plus-Function
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`Defendants’ argument here—that ‘962 claims 7(3-5) and 8(3-5) are step-plus-function
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`claims because they describe a function sans the identification of corresponding acts within the
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`patent’s specification—is rarely viable as “[o]nly a few cases have found the existence of a step-
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`plus-function claim element.” Seal-Flex, Inc. v. Athletic Track and Court Const., 172 F.3d 836,
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`850 n.5 (Fed. Cir. 1999). “[A] claim element deserves step-plus-function treatment when
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`4 – OPINION AND ORDER
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`Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 5 of 7 Page ID#: 5769
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`‘expressed as a . . . step for performing a specified function without the recital of . . . acts in
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`support thereof.” Id. at 848 (quoting O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir.
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`1997). Again, the “phrase ‘step for’ in a method claim raises a presumption that § 112, ¶ 6
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`applies.” Id. at 849. Conversely, the “absence of the phrase ‘step for’ from the language of a
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`claim tends to show that the claim element is not in step-plus-function form.” Id. ‘962 claims
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`7(3-5) and 8(3-5), despite the fact they do not include express step-plus-function language, “may
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`nevertheless fall within § 112, ¶ 6 if they merely claim the underlying function without recitation
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`of acts for performing that function.” Id.
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`Defendants argue that the relevant ‘962 claim language does not explain how netlists are
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`generated, or how the subset of reconfigurable emulation resources allocated to the first circuit
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`design is to be considered in generating the second netlist. Generally, “the ‘underlying function’
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`of a method claim element corresponds to what that element ultimately accomplishes in
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`relationship to what the other elements of the claim and the claim as a whole accomplish,”
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`whereas “‘[a]cts’ . . . correspond to how the function is accomplished.” Id. at 849–50. Given that
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`“method claim elements often recite phrases susceptible to interpretation as either a function or
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`as an act for performing a function,” id. at 849, defendants’ argument has some persuasive value.
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`However, if this court “were to construe every process claim containing steps described by an
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`‘ing’ verb, we would be limiting process claims in a manner never intended by Congress.” O.I.
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`Corp., 115 F.3d at 1583. I have reviewed the contested language in ‘962 claims 7(3-5) and 8(3-5)
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`and find that they are not subject to § 112, ¶ 6 because the specification sufficiently identifies
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`acts for performing the claimed function.
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`5 – OPINION AND ORDER
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`Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 6 of 7 Page ID#: 5770
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`2. “Configuration Information”
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`The parties agree that the ‘962 claim term “configuration information” itself did not have
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`a plain and ordinary meaning at the time of the effective filing date. The parties disagree as to
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`whether one can derive the term’s meaning from the claim language or whether a person of
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`ordinary skill in the art would have to turn to the specification to understand the term’s meaning.
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`The Federal Circuit holds that when a phrase has no accepted meaning to one of ordinary skill in
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`the art, it should be construed “only as broadly as is provided for by the patent itself.”
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`Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164 (Fed. Cir. 2004).
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`Defendants raise several arguments in support of their proposed construction. I rejected
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`their first argument at the Markman Hearing, that the prosecution history limits this claim term,
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`and continue to do so today. I also reject their argument that one reasonably skilled in the art
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`would not understand the term “configuration information” merely because of its novelty for the
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`same reasons that I rejected the argument with regard to the means-plus-function analysis.
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`Independent of these reasons, defendants argue that because “configuration information” has no
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`specific meaning, it must be defined by looking to the ‘962 specification, which necessarily
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`requires looking to ‘962 Figure 4. Because Figure 4 is merely an example, or “one embodiment
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`of a collection of tables for tracking usage status of the emulation resources,” (see Chen Decl.
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`[171] Ex. 1, 14), the figure itself is insufficient support for the argument that the phrase at issue
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`should be limited by a definition holding that configuration information must be generated from
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`the information set forth in Figure 4.
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`The remaining issue is whether to define “configuration information” broadly as plaintiff
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`suggests, or narrowly, as defendants maintain. Defendants assert that “configuration
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`information” cannot be construed separately from ‘962 claim elements 1(b), 4(b), 7(3–4), and
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`6 – OPINION AND ORDER
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`Case 3:10-cv-00954-MO Document 247 Filed 08/10/12 Page 7 of 7 Page ID#: 5771
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`8(3–4) because of the context of the phrase. I disagree. The phrase “configuration information” is
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`used 16 times in ‘962, including eight times in the claims themselves, six times in the
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`specification, and one time in both the one-paragraph abstract and the summary of invention.
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`When reading the phrase in this context, ‘962 supports the broader definition advanced by
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`plaintiff, considering the number of times the phrase is used in the specification, and the fact the
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`specification consistently makes clear that its purpose is to configure emulation hardware, which
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`is a step removed from the generation of netlists based on the netlist and interconnection
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`generator that stores the information displayed in Figure 4. Accordingly, I adopt plaintiff’s
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`proposed definition as stated on the above claim construction chart.
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`CONCLUSION
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`The Court construes the following ‘962 claim terms as stated herein: “reconfigurable
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`emulation resources”; “circuit design(s)”; “configuration information”; “emulation”/“emulating”;
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`“emulator”; and “netlist.”
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`IT IS SO ORDERED.
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`DATED this 10th day of August, 2012.
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`/s/ Michael W. Mosman______
`MICHAEL W. MOSMAN
`United States District Court
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`7 – OPINION AND ORDER