Case 2:14-cv-00902-JRG-RSP Document 155 Filed 01/25/16 Page 1 of 51 PageID #: 26797
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`PARTHENON UNIFIED MEMORY
`ARCHITECTURE LLC,
`
`
`Plaintiff,
`
`
`§
`§
`§
`§
`§
`
`§
`v.
`§
`
`§
`SAMSUNG ELECTRONICS CO., LTD
`§
`ET AL.,
`_______________________________________
`
`
`v.
`§
`
`§
`HUAWEI TECHNOLOGIES CO., LTD.,
`§
`ET AL.,
`§
`_______________________________________
`
`
`v.
`§
`
`§
`MOTOROLA MOBILITY LLC,
`§
`
`§
`§
`
`Case No. 2:14-cv-0902-JRG-RSP
`(Lead)
`
`Case No. 2:14-cv-0687-JRG-RSP
`(Consolidated)
`
`Case No. 2:14-cv-0689-JRG-RSP
`(Consolidated)
`
`
`
`
`
`
`
`Defendants.
`
`
`
`MEMORANDUM OPINION AND ORDER
`
` On August 31, 2015 the Court held a hearing to determine the proper construction of the
`
`disputed terms in nine Asserted Patents. The Court, having considered the parties’ claim
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`construction briefing (Dkt. Nos. 78, 86, 88) and their arguments at the hearing, issues this
`
`Memorandum Opinion and Order construing the disputed terms.
`
`BACKGROUND AND THE ASSERTED PATENTS
`
`Parthenon Unified Memory Architecture LLC (“PUMA”) brings three actions: one
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`against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., a second against
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`Huawei Technologies Co., LTD., Huawei Technologies USD, Inc. and Huawei Device USA,
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`
`
`1
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`Inc., and a third against Motorola Mobility LLC (all defendant parties collectively,
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`“Defendants”). The actions allege that Defendants infringe U.S. Patent Nos. 5,812,789 (“the ’789
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`Patent”), 6,058,459 (“the ’459 Patent”), 6,427,194 (“the ’194 Patent”), 7,321,368 (“the ’368
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`Patent”), 7,542,045 (“the ’045 Patent”), 7,777,753 (“the ’753 Patent”), 8,054,315 (“the ’315
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`Patent”), 8,681,164 (“the ’164 Patent”) and 5,960,464 (“the ’464 Patent”) (collectively, “the
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`Asserted Patents”).
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`The ’789 Patent and the ’459 Patent were filed on the same day, have similar
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`specifications, and incorporate each other by reference. Six patents are based on continuation
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`applications of the ’459 Patent: the ’194 Patent, the ’368 Patent, the ’045 Patent, the ’753 Patent,
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`the ’315 Patent, and the ’164 Patent.1 All nine Asserted Patents were subject to a claim
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`construction order issued by this Court in Parthenon Unified Memory Architecture, LLC v. HTC
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`Corp. et al., Civil Action No. 2:14-cv-0690-JRG-RSP, Dkt. No. 155 (ED. Tex. July 30, 2015)
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`(“the Parthenon I Order”). Furthermore, one additional prior Eastern District of Texas claim
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`construction order involved the ’789 Patent. STMicroelectronics, Inc. v. Motorola, Inc., 327 F.
`
`Supp. 2d 687 (E.D. Tex. 2004).
`
`In general, the ’789 Patent, the ’459 Patent, the ’194 Patent, the ’368 Patent, the ’045
`
`Patent, the ’753 Patent, the ’315 Patent, and the ’164 Patent relate to systems in which a first
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`device (for example a processor) and a decoder/encoder share a common memory. The ’459
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`Patent abstract recites:
`
`An electronic system provides direct access between a first device and a
`decoder/encoder and a memory. The electronic system can be included in a
`computer in which case the memory is a main memory. Direct access is
`accomplished through one or more memory interfaces. Direct access is also
`accomplished in some embodiments by direct coupling of the memory to a bus,
`and in other embodiments, by direct coupling of the first device and
`
`
`1 The specification of the ’464 Patent is not shared by the other Asserted Patents.
`2
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`decoder/encoder to a bus. The electronic system includes an arbiter for
`determining access for the first device and/or the decoder/encoder to the memory
`for each access request. The arbiter may be monolithically integrated into a
`memory interface of the decoder/encoder or the first device. The decoder may be
`a video decoder configured to decode a bit stream formatted to comply with the
`MPEG-2 standard. The memory may store predicted images which are obtained
`from a single preceding image and may also store intra images. Bidirectional
`images which are directly supplied to a display adapter may be obtained from two
`preceding intra or predicted images.
`
`’459 Patent Abstract.
`
`
`
`The ’464 Patent relates, generally, to a system whereby a decoder, which requires
`
`contiguous blocks of memory, can utilize noncontiguous blocks of the system’s memory. The
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`’464 patent abstract recites:
`
`A method and apparatus employing a memory management system that can be
`used with applications requiring a large contiguous block of memory, such as
`video decompression techniques (e.g., MPEG 2 decoding). The system operates
`with a computer and the computer's operating system to request and employ
`approximately 500 4-kilobyte pages in two or more noncontiguous blocks of the
`main memory to construct a contiguous 2-megabyte block of memory. The
`system can employ, on a single chip, a direct memory access engine, a
`microcontroller, a small block of optional memory, and a video decoder circuit.
`The microcontroller retains the blocks of multiple pages of the main memory, and
`the page descriptors of these blocks, so as to lock down these blocks of memory
`and prohibit the operating system or other applications from using them. The
`microcontroller requests the page descriptors for each of the blocks, and programs
`a lookup table or memory mapping system in the on-chip memory to form a
`contiguous block of memory. As a result, the video decoder circuit can perform
`operations on a 2-megabyte contiguous block of memory, where
`the
`microcontroller employs the lookup table to translate each 2-megabyte contiguous
`address requested by the video decoder circuit to its appropriate page in the main
`memory. As soon as the video decoding operations are complete, the
`microcontroller releases the blocks of multiple pages of memory back for use by
`the computer.
`
`’464 Patent Abstract.
`
`
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`APPLICABLE LAW
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`1. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
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`by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
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`F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
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`262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. Courts give claim terms their ordinary and accustomed meanings as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips,
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`415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning, because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
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`terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
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`or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id. The specification may also resolve ambiguous claim terms “where the
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`ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
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`permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
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`1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
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`disputed claim language, particular embodiments and examples appearing in the specification
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`will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
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`1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
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`tool to supply the proper context for claim construction because a patent applicant may also
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`define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
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`1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
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`in prosecuting a patent.”).
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`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id.
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`2. Claim Indefiniteness
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`
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`Patent claims must particularly point out and distinctly claim the subject matter regarded
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`as the invention. 35 U.S.C. § 112, ¶ 2. “[I]ndefiniteness is a question of law and in effect part of
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`claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). A
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`party challenging the definiteness of a claim must show it is invalid by clear and convincing
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`evidence. Young v. Lumenis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007).
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`
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`The definiteness standard of 35 U.S.C. § 112, ¶ 2 requires that:
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`[A] patent’s claims, viewed in light of the specification and prosecution history,
`inform those skilled in the art about the scope of the invention with reasonable
`certainty. The definiteness requirement, so understood, mandates clarity, while
`recognizing that absolute precision is unattainable. The standard we adopt
`accords with opinions of this Court stating that “the certainty which the law
`requires in patents is not greater than is reasonable, having regard to their subject-
`matter.
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`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129–30 (2014) (internal citations
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`omitted).
`
`3. Construing Claim Terms that Have Previously Been Construed by This Court or
`Other Courts
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`The Court has construed several of the disputed terms in Parthenon I. Additionally, in
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`STMicroelectronics the Court construed the ’789 Patent. These constructions do not control but
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`are instructive and will, at times, provide part of the basis for the Court’s analysis. See Burns,
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`Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F. Supp. 2d 692, 697 (E.D. Tex. 2005)
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`(while a previous construction may be instructive and provide the basis of the analysis, the
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`previous construction is not binding on the court, particularly when there are new parties and
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`those parties have presented new arguments).
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`AGREED TERMS
`
`The parties agreed to the following constructions in their joint claim construction chart:
`
`
`
`Term
`“simultaneously accesses the bus”
`“translate”
`
`“algorithmically translate”
`
`“display device”
`
`“display adapter”
`
`
`Agreed Construction
`“accesses the bus at the same time”
`“convert”
`“convert using at least one mathematical
`operation”
`“screen and its circuitry
`“an adaptor that processes images for a display
`device”
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`Dkt. No. 90-2 at 6-7. The parties have agreed that the following terms require no construction:
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`“direct memory access (DMA) engine” “direct memory access engine” and “refresh logic.” (Dkt.
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`No. 78 at 24); (Dkt. No. 86 at 2).
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`DISPUTED TERMS
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`1. “bus” (’789 Patent claims 1, 13, 15, 28; ’459 Patent claims 1, 2, 7, 11, 13; ’194 Patent
`claims 1, 2, 9, 11, 16-18, 23; ’368 Patent claims 1, 5, 7, 13, 19, 20, 23; ’045 Patent
`claims 1, 4, 5, 12, 15; ’753 Patent claims 1, 7; ’315 Patent claim 1 and ’164 Patent
`claims 1, 6, 7)
`
`PUMA’s Construction
`No construction necessary.
`
`Alternatively: “a signal line or a set of
`associated signal lines to which a number of
`devices are coupled and over which
`information may be transferred between
`them”
`
`Defendants’ Construction
`“a signal line or set of associated signal lines
`to which a number of devices are directly
`connected and over which information may
`be transferred by only one device at a time”
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`
`
`
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`The parties’ dispute whether devices must be “directly” connected to a bus and whether a
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`bus may only transfer information one device at a time.
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`Positions of the Parties
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`
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`PUMA asserts that the term “bus” is known in the art and does not need construction. Its
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`alternative construction comes from STMicroelectronics. In STMicroelectronics, the parties
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`agreed to “a signal or set of signal lines to which a number of devices are coupled and over
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`which information may be transferred between them.” STMicroelectronics, 327 F. Supp. 2d at
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`711. PUMA asserts that its construction is consistent with an IEEE extrinsic evidence dictionary.
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`(Dkt. No. 78 at 6). PUMA further asserts that in a prior art patent, Defendants’ own expert, Dr.
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`Stone, defined “bus” as “a series of electrical lines interconnecting the modules in the computer.”
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`(Dkt. No. 78 at 8 (quoting Dkt. No. 78 Ex. L (U.S. Patent No. 5,093,890) at 1:19-21)).
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`
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`PUMA contends that the use of intervening components, such as a switch, still renders a
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`device a “bus.” PUMA cites to the prior art SPARC memory bus, the MBus, and similar buses
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`that feature switches, tri-state buffers, and multiplexers. (Dkt. No. 78 at 8 (citing Ex. P)). PUMA
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`notes that Defendants’ expert, Dr. Stone, characterized the MBus tri-state buffer as a switch that
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`disconnects drivers from the bus. (Id.).
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`
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`Defendants assert that the Court’s preliminary construction in Parthenon I is incomplete
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`because it does not give guidance as to where one bus ends and another bus begins. (Dkt. No. 86
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`at 3). Defendants contend that this is important because some claims specifically require no more
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`than one bus. (Id. (citing ’459 Patent claim 1 and ’194 Patent claim 1)). Defendants assert that
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`applying the Court’s preliminary construction to a complex circuit, one of ordinary skill may
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`improperly conclude that the entire circuit is one bus. Defendants assert that the phrases “by only
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`one device at a time” and “directly” address this issue. Defendants assert that these limitations
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`are supported by both the intrinsic evidence and the understanding of one skilled in the art in
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`1996. (Id.).
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`
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`As to the phrase “one device at a time,” Defendants contend that a fundamental
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`characteristic of a bus is that only one device may transfer information at a time. (Id. at 4 (citing
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`Stone Declaration)). Defendants assert that to prevent contentions on the bus lines, there must be
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`a mechanism to ensure that only one device is allowed to transfer information at a time. (Id.).
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`Defendants cite column 12 line 49 to column 13 line 36 of the ’459 Patent as support for
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`including the phrase “one device” at a time. (Id.) At the oral hearing, Defendants also cited to a
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`specification table, which disclosed the arbiter functions and states. ’459 Patent 13:15-27.
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`Defendants state that the arbiter states teach that only one device can gain access to the bus at a
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`time.
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`Defendants contend that PUMA has mischaracterized prior art buses such as the MBus.
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`Defendants state that PUMA states the MBus includes intervening components such as tri-state
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`buffers and multiplexers. (Id. at 7). Defendants assert, however, that these components are not
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`part of the bus, but rather, part of the bus interface circuitry that resides within the devices
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`connected to the bus. (Id. (citing Stone Deposition)). Defendants contend that it is important to
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`distinguish a bus from the bus interface circuitry within each device.
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`Defendants claim that this distinction is important because some claims require that
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`devices be coupled to other devices through an interface. Defendants point to the ’045 Patent
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`claim 4: “a video decoder configured to be coupled to the main memory via a first bus interface”
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`and “a central processing circuit configured to be coupled to the main memory via a second bus
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`interface.” (Id. at 8). Defendants assert that the specification teaches a distinction between a bus
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`and bus interface circuitry. (Id. (quoting “FIFO 30 is supplied with compressed data from bus 10
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`via an interface circuit PCI I/F 39” (’459 Patent 11:59-60, Figure 6) and “bus interface 210 for
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`any system busses 170 to which it is coupled” (’459 Patent 12:17-18, Figure 7))).
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`
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`As to construing “coupled” using the phrase “directly connected,” Defendants assert that
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`another construction of “coupled” makes it impossible to differentiate between one bus and two
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`buses. (Id. at 4-5). Defendants assert that PUMA’s construction would render all devices in the
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`circuit “directly or indirectly” coupled to one another. (Id. at 5). Defendants cite to PUMA’s
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`color-coded illustration of ‘789 Patent Figure 1c as illustrative.
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`
`
`(Id. at 6).
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`Defendants assert that PUMA says that the modem 199 is coupled to the core logic
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`chipset 190 through a bus 170. (Id.). However, Defendants note that to couple those two devices,
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`the communication must pass through two buses, the ISA bus 198 and PCI bus 170. Defendants
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`assert that PUMA’s use of “coupled” would allow the PCI and ISA buses to be viewed as one
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`bus. (Id.). Defendants assert that this conflicts with the specification and would not be feasible
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`because the PCI and ISA buses operate under different specifications. (Id.). Defendants assert
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`that the modem 199 is configured to communicate over the ISA bus 198, but the modem 199
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`cannot communicate over the PCI bus 170 without first going through a separate element – the
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`PCI bridge 192.
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`Defendants assert that, similarly, the PCI chipset is “directly connected” to the PCI bus
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`170. Defendants state that the decoder 10 is configured to communicate over the PCI bus 170.
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`But, in order for the decoder 10 to communicate with the modem 199, the decoder needs to
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`match the ISA protocol, which is the function of the PCI bridge 192. (Id. at 7). Defendants assert
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`that only devices that are “directly connected” to a bus may readily transfer information and
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`communicate on that bus. Finally, at the oral hearing, Defendants cited Ethicon as an example of
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`a case where the Federal Circuit rejected a meaning for “connected” that included indirect and
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`direct connections. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1578 (Fed.
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`Cir. 1996).
`
`
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`In reply, PUMA argues that the passage that Defendants have cited in support of using
`
`the phrase “one device at a time” does not show that the phrase should be included in the Court’s
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`construction. PUMA asserts that the passage does not state a bus can only transfer information
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`one device at a time, but merely describes an arbiter of one of the preferred embodiments. (Dkt.
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`No. 88 at 2).
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`PUMA asserts that Defendants are rewording the “controlled by an arbiter” language that
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`Defendants included in their original construction. PUMA asserts that the “one device” language
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`is improper for the same reasons. PUMA contends that not every claim requires an “arbiter” and
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`for the claims that do, the operation of the arbiter stands separate, apart and distinct from the
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`term “bus.” (Id.). PUMA asserts that Defendants’ construction would read out any bus that is not
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`implemented with an arbiter. For example, PUMA asserts that though claim 15 of the ’789
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`Patent recites a “bus,” an arbiter limitation is only added in dependent claim 19. (Dkt. No. 78 at
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`7).
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`
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`PUMA further asserts that Defendants’ construction reads out common bus technologies
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`like split-transaction buses and other bus technologies that can transfer information between
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`multiple devices at the same time. (Dkt. No. 88 at 2). PUMA asserts that prior art U.S. Patent
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`4,785,394 (issued Nov. 15, 1988) describes multiple devices that use a bus at the same time. The
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`prior art patent states: “During the time period which elapses between the read address signal and
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`the response from the memory, other processors in the computer system are communicating
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`other signals to other components of the system over the bus.” (Dkt. No. 88 Ex. A, U.S. Patent
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`4,785,394 1:58-62).
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`
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`PUMA also argues that adding the phrase “directly connected” to the Court’s
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`construction would read out buses that use tri-state buffers, other intervening components, or
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`switches that disconnect various devices from the bus. PUMA contends that Defendants’
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`construction would restrict the claim to the most primitive form of a bus and should be rejected.
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`(Id. at 2-3).
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`
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`PUMA contends that Defendants manufactured an argument as to the ISA bus and PCI
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`bus of Figure 1c of the ’789 Patent being considered one bus under PUMA’s construction.
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`PUMA asserts that it has never taken such a position. (Id. at 3). PUMA asserts that the Court’s
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`proposed insertion of “associated” addresses Defendants’ concern. PUMA asserts that a person
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`of skill in the art would not view the signal lines of the PCI bus and the ISA to be a “set of
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`associated signal lines.” (Id.).
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`
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`At the oral hearing, with regard to the “one device at a time” limitation, much of the
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`discussion by both parties focused upon the content of extrinsic evidence prior art buses.
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`Defendants argued that the extrinsic evidence U.S. Patent No. 4,785,394, cited by PUMA, states
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`that even in split transaction buses, “[t]he arbitration technique determines which one of the
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`particular components of the system has exclusive access to the bus at any particular time.” (Dkt.
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`No. 88 Ex. A, U.S. Patent 4,785,394 1:66-2:1). As to the MBus, Defendants cited to a passage
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`that indicated that for any given signal, the signal is driven in the same cycle by only one source.
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`Both parties also discussed four exhibits (Exhibits A-D) filed by PUMA after Defendants
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`changed their construction in the briefing to include the “one device at a time” limitation. (Dkt.
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`No. 104, Ex. A-D). Defendants assert that the additional disclosures relate not to buses but rather
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`to crossbar switches and switch fabrics. Defendants assert that such structures are network
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`topologies, different from the linear topology of the buses disclosed in the Asserted Patents.
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`Defendants contend that the patentees could have claimed these network topologies but did not.
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`PUMA, in response, cited to Ex. A section 2.2 which described what Defendants characterized as
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`“network topologies” (including the Mercury RACEway) to be a “bus.” (Dkt. No. 104, Ex. A at
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`203). PUMA also cited to Ex. C which described the RACEway crossbar topology to be a “bus.”
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`(Dkt. No. 104, Ex. C at 31).
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`Analysis
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`Defendants seek with the “one device at a time” limitation, a negative limitation that
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`excludes certain categories of devices. The use of a negative limitation in the construction of a
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`claim generally requires support from the intrinsic evidence. See Omega Eng’g, Inc. v. Raytek
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`Corp., 334 F.3d 1314, 1322-23 (Fed. Cir. 2003) (declining to add a negative limitation when
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`there was no “express disclaimer or independent lexicography in the written description that
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`would justify adding that negative limitation”). As to the intrinsic evidence, Defendants only cite
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`to an embodiment. Defendants do not cite to any disclaimer or disavowal. Even if only a single
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`embodiment exists, the preferred embodiment is not inherently required to be read into the
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`claims. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir.
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`2011) (“Even where a patent describes only a single embodiment, claims will not be read
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`restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using
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`words or expressions of manifest exclusion or restriction.”) (internal citations omitted).
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`Moreover, Defendants’ construction, in essence, reads the arbiter concept into the “bus”
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`term. However, as described in the patents, the arbiter is a separate structure that has a separate
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`function. ’459 Patent Figure 7, 12:49-13:36; ’789 Patent Figure 2, 4:4-11, 9:42-57. The fact that
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`the specification discloses a separate arbiter and arbitration function is indicative that such
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`functionality is not inherent in the term “bus.” As pointed out by PUMA, the claims also confirm
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`that the arbiter function is not inherently part of the claimed bus. Some claims recite the arbiter
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`and arbitration and some claims do not. See, e.g., ’789 Patent Claims 15 and 19. The intrinsic
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`record does not teach that buses that allow multiple devices to access at the same time are
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`excluded.
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`As to the extrinsic evidence, Defendants rely primarily on the declaration of Dr. Stone.
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`But PUMA presents contradicting evidence, such as the MBus, U.S. Patent No. 4,785,394, and
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`Dkt. No. 104 Exhibits A-C.2 On balance, the extrinsic evidence does not require the Court to
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`construe the “bus” term to include “only one device at a time.” Rather, the evidence indicates
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`that buses may include tri-state buses, split transaction buses, and “network topology” buses.3 In
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`2 There appears to be a debate between the parties as to the date of Exhibit D. This Order does
`not rely on Exhibit D.
`3With regard to split transaction buses, the dispute shifts to what is meant by “one device at a
`time.” U.S. Patent 4,785,394 teaches that an operation may be split so that for a given memory
`request a read address may be sent and during the time between the read address signal and the
`response from the memory, another device may utilize the bus. (Dkt. No. 88 Ex. A, U.S. Patent
`4,785,394 1:58-62). Thus, during one device’s read operation another device may utilize the bus
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`sum, the Court finds that the extrinsic evidence does not support the negative limitation sought
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`by Defendants.
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`Furthermore, the Court does not accept Defendants’ argument that the claim construction
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`should include the word “directly.” Whether a device is directly or indirectly connected to a bus
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`does not change the nature and status of the bus. The examples in the ‘789 Patent are illustrative.
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`For example, the ’789 Patent describes the structure of Figure 2 as the decoder/encoder 45 being
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`“coupled to the memory 50 through devices, typically a bus 70.” ’789 Patent 6:29-30. Figure 2
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`shows that the decoder 45 is indirectly coupled to the memory 50 through an intervening
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`memory interface 48 and a bus 70. The meaning of the term “bus” and “bus 70” does not change
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`just because the memory interface 48 separates the bus 70 and the decoder 45. Other figures are
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`illustrative. Decoder 10 may be directly connected to PCI bus 170 such as in Figure 1c of the
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`’789 Patent. Alternatively, the decoder/encoder 45 may be indirectly connected to the PCI bus
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`170 through a PCI bus interface 210 such as shown in Figure 4 of the ’789 Patent. These
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`variations do not impact whether the PCI bus 170 is a bus. Indeed, Defendants’ proposed
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`construction would exclude disclosed configurations such as ’789 Patent Figure 2 where the
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`decoder is indirectly connected to the bus. Constructions that exclude a disclosed embodiment
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`are rarely correct. On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133,
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`1138 (Fed. Cir. 2004).
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`Finally, Defendants’ citation to Ethicon as support for including the word “directly” is
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`not persuasive. First, the Court noted that Ethicon dealt with the narrower term “connected” not
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`“coupled.” Ethicon, 93 F.3d at 1578. Second, Ethicon states that the context of a term’s usage in
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`the intrinsic evidence is highly relevant to claim construction. See id. (“We acknowledge that the
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`during the response time. Defendants’ construction creates ambiguity as to whether such
`operations are “one device at a time” or two devices at a time.
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`term ‘connected to’ could, in other contexts, be broadly construed.”). Here, as discussed above,
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`the specification teaches that devices may be coupled to the bus through indirect connections
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`which include an intervening component.
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`Finally, the Court rejects Defendants’ argument that, under PUMA’s construction, one
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`skilled in the art would consider the PCI bus and ISA bus (and in fact the entire circuit) to be one
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`bus. First, the patents clearly state these structures are different buses. Second, as noted in
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`Parthenon I, in prosecution, the Applican