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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`11 QUALCOMM INCORPORATED,
`Plaintiff,
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`13 V.
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`14 APPLE INCORPORATED,
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`Case No.: 17ev 1375 DMS(MDD)
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`ORDER CONSTRUING CLAIMS
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`Defendant.
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`APPLE INCORPORATED,
`Counter Claimant,
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`V.
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`QUALCOMM INCORPORATED,
`Counter Defendant.
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`This matter came before the Court for a claim construction hearing on August 7,
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`2018. David Nelson, Nathan Hamstra and Patrick Schmidt appeared on behalf of
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`Qualcomm, and Juanita Brooks, James Dowd and Joseph Mueller appeared on behalf of
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`Apple. After a thorough review of the parties' claim construction briefs and all other
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`material submitted in connection with the hearing, the Court issues the following order
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`construing the disputed terms of the patents at issue here.
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`Intel v. Qualcomm
`Exhibit 1227
`IPR2018-01154
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`17cv1375 DMS(MDD)
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`

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`3:17-cv-01375-DMS-MDD Document 351 Filed 09/18/18 PagelD.12395 Page 2 of 10
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`I.
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`BACKGROUND
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`There are four Qualcomm patents at issue in this case, two of which contain claim
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`terms that require construction: United States Patents Numbers 8,698,558 ("the '558
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`Patent") and 8,633,936 ("the '936 Patent").' There are three terms at issue in each of these
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`Patents. In the '558 Patent, the disputed terms are "envelope signal," "based on" and
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`"receive ... a first supply voltage" / "receiving ...
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`the first supply voltage." Each of these
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`terms is found in claim 6, which recites:
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`An apparatus for wireless communication, comprising:
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`a power amplifier operative to receive and amplify an input radio frequency
`(RF) signal and provide an output RF signal; and
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`a supply generator operative to receive an envelope signal and a first supply
`voltage, to generate a boosted supply voltage having a higher voltage than the
`first supply voltage, and to generate a second supply voltage for the power
`amplifier based on the envelope signal and the boosted supply voltage,
`wherein the supply generator incorporates an operational amplifier (op-amp)
`operative to receive the envelope signal and provide an amplified signal, a
`driver operative to receive the amplified signal and provide a first control
`signal and a second control signal, a P-channel metal oxide semiconductor
`(PMOS) transistor having a gate receiving a first control signal, a source
`receiving the boosted supply voltage or the first supply voltage, and a drain
`providing the second supply voltage, and an N-channel metal oxide
`semiconductor (NMOS) transistor having a gate receiving the second control
`signal, a drain providing the second supply voltage, and a source coupled to
`circuit ground."
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`The other Qualcomm Patents at issue are United States Patents Numbers 8,838,949 ("the
`'949 Patent") and 9,535,490 ("the '490 Patent"). The parties also briefed claim
`construction issues for another Qualcomm Patent, U.S. Patent No. 9,608,675 ("the '675
`Patent"). However, the parties have since dismissed all claims related to the '675 Patent.
`Accordingly, the Court does not address any claim construction issues on that Patent.
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`Ca3e 3:17-cv-01375-DMS-MDD Document 351 Filed 09/18/18 PagelD.12396 Page 3 of 10
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`1
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`In the '936 Patent, the disputed terms are "programmable streaming processor",
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`2 "conversion instruction that ... converts graphics data ...
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`from a first data precision to
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`3 converted graphics data having a second data precision," and "graphics instruction." Each
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`4 of these terms is found in claim 19, which recites:
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`A device comprising:
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`a controller configured to receive a graphics instruction for execution within
`a programmable streaming processor, wherein the indication of the data
`precision is contained within the graphics instruction and wherein the graphics
`instruction is a first executable instruction generated by a compiler that
`complies graphics application instructions, to receive an indication of a data
`precision for execution of the graphics instruction, and to receive a conversion
`instruction that, when executed by the programmable streaming processor,
`converts graphics data associated, with the graphics instruction, from a first
`data precision to converted graphics data having a second data precision,
`wherein the conversion instruction is different than the graphics instruction
`and wherein the conversion instruction is generated by the compiler; and
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`a plurality of execution units within the processor,
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`wherein the controller is configured to select one of the execution units based
`on the indicated data precision and cause the selected execution unit to execute
`the graphics instruction with the indicated data precision using the converted
`graphics data associated with the graphics instruction.
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`Four of the disputed terms at issue here were the subject of claim construction
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`20 proceedings before the International Trade Commission ("ITC"), specifically, "envelope
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`21 signal," "based on," "programmable streaming processor" and "conversion instruction that
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`... converts graphics data ...
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`from a first data precision to converted graphics data having
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`23 a second data precision." (See Qualcomm's Opening Claim Construction Br., Ex. 9.) The
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`24 parties rely on the ITC's claim constructions in their arguments here, but the ITC's claim
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`25 constructions are not binding on this Court. Texas Instruments Inc. v. Cypress
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`26 Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996) (stating "that ITC decision are
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`27 not binding on district court in subsequent cases brought before them[.]") With this
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`28 background, the Court turns to the claim construction issues.
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`II.
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`DISCUSSION
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`Claim construction is an issue of law, Markman v. Wesiview Instruments, Inc., 517
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`4 U.S. 3705 372 (1996), and it begins "with the words of the claim." Nystrom v. TREXCo.,
`Inc., 424 F.3d 1136, 1142 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic, Inc.,
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`6 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Generally, those words are "given their ordinary
`7 and customary meaning." Id. (citing Vitronics, 90 F.3d at 1582). This "is the meaning
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`that the term would have to a person of ordinary skill in the art in question at the time of
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`the invention." Id. (quoting Phillips v. A WH Corp., 415 F.3d 13035 1313 (Fed. Cir. 2005)).
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`10 "The person of ordinary skill in the art views the claim term in the light of the entire
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`intrinsic record." Id. Accordingly, the Court must read the claims "in view of the
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`12 specification, of which they are a part." Id. (quoting Markman v. Westview Instruments,
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`Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). In addition, "the prosecution history can often
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`inform the meaning of the claim language by demonstrating how the inventor understood
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`the invention and whether the inventor limited the invention in the course of prosecution,
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`16 making the claim scope narrower than it would otherwise be." Id. (quoting Phillips, 415
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`17 F.3dat1318).
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`18 A.
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`The '558 Patent
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`19
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`As stated above, there are three terms at issue in the '558 Patent: (1) "envelope
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`20 signal," (2) "based on" and (3) "receive ... a first supply signal" / "receiving ...
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`the first
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`21 supply signal."
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`1.
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`"Envelope signal"
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`Turning to the first term "envelope signal," Qualcomm proposes the Court construe
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`this term as "signal indicative of the upper boundary of the output RF signal." Apple
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`25 proposes the Court construe this term according to its plain and ordinary meaning, or in the
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`26 alternative, that the term be construed as "signal indicative of the upper boundary of
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`27 another signal."
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`1
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`Both sides rely on the specification to support their proposed constructions.
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`2 Qualcomm relies specifically on Figure 2C, which depicts an envelope tracker receiving
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`3 "an envelope of the RFout signal[.J" ('558 Patent at 4:22-24.) However, this sole
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`4 embodiment does not warrant imposition of Qualcomm's proposed limitation into the
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`5 claim language. As Qualcomm concedes, another portion of the specification refers to "the
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`6 envelope of the RFin signal[.]" (Id. at 3:64-65.) Accordingly, the Court adopts Apple's
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`7 proposed construction of "envelope signal" as "signal indicative of the upper boundary of
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`8 another signal."
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`2.
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`"Based on"
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`The second term at issue is "based on." Qualcomm asserts this term should be
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`11 construed according to its plain and ordinary meaning. Apple argues the term is indefinite
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`12 as used in claim 7 of the '558 Patent.2
`Claim 7 depends from claim 6, which is set out above. Whereas claim 6 recites "a
`14 second supply voltage for the power amplifier based on the envelope signal and the boosted
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`15 supply voltage[,]" (emphasis added), claim 7 provides: "The apparatus of claim 6, wherein
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`the supply generator is operative to generate the second supply voltage based on the
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`17 envelope signal and either the boosted supply voltage or the first supply voltage."
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`18
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`(emphasis added). In Multilayer Stretch Cling Film Holding, Inc. v. Berry Plastics Corp.,
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`19 831 F.3d 1350 (Fed. Cir. 2016), the court discussed claims with a structure similar to claims
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`20 6 and 7 here, and that were subject to a similar challenge of indefiniteness. There, the
`independent claim was construed to be limited to the four resins recited therein, while the
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`22 dependent claim included a different type of resin. Id. at 1360-62. The district court found
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`the dependent claim was invalid, and the Federal Circuit affirmed that decision, stating:
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`24 "A dependent claim that contradicts, rather than narrows, the claim from which it depends
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`is invalid." Id. at 1362.
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`2 Outside of claim 7, it appears the parties agree that "based on" should be construed
`according to its plain and ordinary meaning.
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`Neither side cited this case in its briefs, but it appears to be dispositive of the issue
`presented here. Contrary to the requirement of 35 U.S.C. § 112 ¶ 4,3 claim 7 does not
`"specify a further limitation" on claim 6. Rather, it expands the scope of claim 6 to include
`another possible combination as the basis for the second supply voltage. Under these
`circumstances, and the reasoning set out in Multilayer Stretch, the term "based on" is
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`indefinite as used in claim 7.
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`3.
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`"Receive ... a first supply voltage" / "receiving ...
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`the first supply voltage"
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`The third term at issue here is "receive/receiving ...
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`a/the first supply voltage."
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`Qualcomm proposes that the Court construe this term according to its plain and ordinary
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`meaning. Apple proposes that the term be construed as "connect to a first supply voltage."
`Apple fails to explain why this term needs construction. On its face, the term
`"receive" or "receiving" has a clear meaning, and Apple admits "that in most contexts
`'receive' and 'connect to' are not synonymous." (Apple's Opening Claim Construction
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`Br. at 8.) Nevertheless, Apple urges the Court to replace "receive" and "receiving" with
`the words "connect to." There is nothing in the patent, however, that requires deviation
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`from the plain meaning of "receive" or "receiving." Accordingly, the Court adopts
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`Qualcomm's position here, and construes this term according to its plain and ordinary
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`meaning.
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`B.
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`The '936 Patent
`Turning to the '936 Patent, there are three terms at issue: (1) "programmable
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`streaming processor," (2) "conversion instruction that ... converts graphics data ...
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`from a
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`first data precision to converted graphics data having a second data precision" and (3)
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`"graphics instruction."
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`Section 112 ¶ 4 states, "a claim in dependent form shall contain a reference to a claim
`previously set forth and then specify a further limitation of the subject matter claimed." 35
`U.S.C. § 112 ¶ 4. This statute was replaced by § 112(d) of the America Invents Act, but
`the substance remained the same. Multilayer Stretch, 831 F.3d at 1362 n.8.
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`17M 375 DMS(MDD)
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`Ca3e 3:17-cv-01375-DMS-MDD Document 351 Filed 09/18/18 PagelD.12400 Page 7 of 10
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`"Programmable streaming processor"
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`1.
`The first term at issue in the '936 Patent is "programmable streaming processor."
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`3 Qualcomm proposes the Court construe this term as "instruction-based processor capable
`4 of concurrently executing threads of instructions on multiple data streams." Apple
`5 proposes the Court construe the term as "processor with multiple execution units, each
`6 capable of executing instructions on a data stream."
`In reviewing the parties' proposals, it is clear they agree that a "programmable
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`8 streaming processor" must be capable of executing instructions. Apple's proposal that the
`9 processor have "multiple execution units" is also unnecessary as that limitation is set out
`('936 Patent at 19:17.) Thus, the dispute here centers on
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`10 explicitly in claim 19.
`11 Qualcomm' s inclusion of the word "concurrently" in its proposed construction.
`Apple argues the processor is not required to execute instructions "concurrently,"
`therefore it would be inappropriate and improper to include that limitation in the claim.
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`14 However, Qualcomm is not requesting that a concurrency requirement be imported into the
`15 claim. As indicated in its proposed construction, Qualcomm is requesting only that the
`16 processor be "capable of" executing instructions concurrently, a point Apple does not
`17 appear to dispute. Indeed, it appears the parties agree the processor described in the '936
`18 Patent is capable of executing instructions both concurrently and sequentially.
`At oral argument, it appeared the main point of contention here is the meaning of
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`20 "concurrently," with Qualcomm arguing that "concurrently" includes "simultaneously"
`21 and Apple arguing to the contrary. This argument runs afield of the actual claim language,
`22 but to the extent the parties dispute this issue, the Court agrees with Qualcomm that the
`23 concept of "concurrently" includes "simultaneously."
`With these understandings, the Court declines to adopt either side's proposed
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`25 construction of this term, and instead construes "programmable streaming processor"
`26 according to its plain and ordinary meaning consistent with the above discussion.
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`2.
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`from a first data
`"Conversion instruction that ... converts graphics data ...
`precision to converted graphics data having a second data precision"
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`The second term at issue in the '936 Patent is "conversion instruction that
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`4 converts graphics data ...
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`from a first data precision to converted graphics data having a
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`second data precision." Qualcomm proposes this term be construed according to its plain
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`6 and ordinary meaning, or as "an instruction that when executed converts graphics data
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`7 having one data precision to graphics data having a different data precision." Apple
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`8 proposes that the term be construed as "an explicit instruction that converts, within the
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`same data type, graphics data from one data precision to converted graphics data having a
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`10 different data precision." As evident from these competing proposals, the disputes here are
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`twofold: First, must the conversion instruction be "explicit," and second, must the
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`12 conversions occur within the same data type.
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`On the first dispute, the claim language is clear that "the conversion instruction is
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`14 different than the graphics instruction[.]" That the conversion instruction is different,
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`15 however, does not mean it is "explicit," as Apple proposes. For that limitation, Apple relies
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`16 on the prosecution history, and argues Qualcomm disclaimed the concept of "implicit"
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`instructions when it distinguished the Uchida and Bhargava references during prosecution.
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`18 However, the Court disagrees. Although Qualcomm mentioned the "implicit" nature of
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`the conversion of data in Uchida and Bhargava, that discussion did not amount to a clear
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`20 and unmistakable disclaimer of "implicit" instructions. Thus, the Court rejects that
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`21 proposal.
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`The Court agrees, however, with Apple's argument that the conversion of graphics
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`23 data must occur within the same data type. This argument finds support, first and foremost,
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`in the claim language, which speaks in terms of converting graphics data from one data
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`25 precision to another. ('936 Patent at 19:12-14.) The prosecution history also supports
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`26 Apple's argument that Qualcomm disclaimed data type conversions. In the prosecution
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`27 history, Qualcomm clearly, and repeatedly, distinguished Bhargava on the ground it did
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`28 "not disclose converting graphics data from a first precision level to a second data precision
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`1
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`5
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`level. Instead, Bhargava discloses data type conversions." (Deci. of Mark Selwyn in Supp.
`2 of Apple's Opening Claim Construction Br., Ex. 12, ECF No. 230-13 at 55.) (See also id.
`3 at 81.) That Qualcomrn later distinguished Bhargava on other grounds does not affect these
`4 earlier disclaimers, which were clear and unmistakable.
`Thus, consistent with the above, the Court construes "conversion instruction that
`from a first data precision to converted graphics data having a
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`6 converts graphics data ...
`7 second data precision" the same way that term was construed in the ITC proceedings,
`8 namely as "an instruction that when executed converts, within the same data type, graphics
`9 data having one data precision to graphics data having a different data precision."
`"Graphics instruction"
`3.
`The final term at issue here is "graphics instruction." Qualcomm proposes that the
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`12 Court construe this term according to its plain and ordinary meaning. Apple contends the
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`term is indefinite.
`Title 35 United States Code § 112(b) provides the basis for the definiteness
`requirement of United States patents. This statute states: "The specification shall conclude
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`16 with one or more claims particularly pointing out and distinctly claiming the subject matter
`17 which the inventor or a joint inventor regards as the invention." 35 U.S.C. § 112(b). The
`18 purpose of this requirement is "to inform the public of the bounds of the protected
`invention, i.e., what subject matter is covered by the exclusive rights of the patent."
`19
`20 Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
`21 Absent this information, "competitors cannot avoid infringement, defeating the public
`22 notice function of patent claims." Id. (citing Athletic Alternatives, Inc. v. Prince Mfg., Inc.,
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`23 73 F.3d 1573, 1581 (Fed. Cir. 1996)).
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`In Nautilus v. Biosig Instruments, Inc.,
`24
`25 Supreme Court set out a new standard for determining indefiniteness of patent claims. In
`that case, the Court set out three aspects of the inquiry into indefiniteness.
`First, definiteness is to be evaluated from the perspective of someone skilled
`in the relevant art. Second, in assessing definiteness, claims are to be read in
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`U.S.
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`, 134 S.Ct. 2120 (2014), the
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`17cv1375 DMS(MDD)
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`Third,
`light of the patent's specification and prosecution history.
`"[d]efiniteness is measured from the viewpoint of a person skilled in [the] art
`at the time the patent was filed."
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`Id. at 2128 (citations omitted). The Court incorporated these aspects into its holding that
`"a patent is invalid for indefiniteness if its claims, read in light of the specification
`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,
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`those skilled in the art about the scope of the invention." Id. at 2124.
`Here, Apple has not met its burden to show, by clear and convincing evidence, that
`"graphics instruction" is indefinite. Apple argues a person of ordinary skill in the art would
`be unable "to distinguish between a 'graphics instruction' and any other processor
`instruction, including the 'different' claimed 'conversion instruction." (Apple's Opening
`Claim Construction Br. at 25.) However, the Court disagrees. The claim language itself
`sets out the differences between a "graphics instruction" and a "conversion instruction."
`For example, a "graphics instruction" contains an indication of data precision, and is a
`"first executable instruction generated by a compiler that compiles graphics application
`instructions[,]" ('936 Patent at 19:5-8), whereas a "conversion instruction" "converts
`graphics data associated, with the graphics instruction, from a first data precision to
`converted graphics data having a second data precision[.]" (Id. at 19:11-14.) Apple has
`not met its burden to show this term is indefinite. Accordingly, the Court adopts
`Qualcomm's proposal that this term be construed according to its plain and ordinary
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`meaning.
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`CONCLUSION
`For the reasons stated above, the disputed terms are interpreted as set forth in this
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`Order.
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`IT IS SO ORDERED.
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`Dated: September 18, 2018
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`2 1P4VA .
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`Hon. Dana IL Sabraw
`United States District Judge
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