Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 1 of 48
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`
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`BITMICRO LLC,
` Plaintiff,
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`-v-
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`KIOXIA AMERICA, INC.,
`KIOXIA CORPORATION,
` Defendants.
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`
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`
`
`6:22-CV-00331-ADA
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`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`CLAIM CONSTRUCTION ORDER AND MEMORANDUM IN SUPPORT THEREOF
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`Before the Court are the Parties’ claim construction briefs: Defendants KIOXIA America,
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`Inc. and KIOXIA Corporation’s Opening and Reply briefs (ECF Nos. 33and 43, respectively) and
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`Plaintiff BiTMICRO LLC’s Response and Sur-Reply briefs (ECF Nos. 38 and 42, respectively).
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`The Court provided preliminary constructions for the disputed terms one day before the hearing.
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`The parties informed the Court that they did not choose to argue against any of the preliminary
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`constructions. The Court now enters its preliminary constructions as its final constructions.
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`
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`I.
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`DESCRIPTION OF THE ASSERTED PATENTS
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`Plaintiff asserts U.S. Patent Nos. 6,496,939 (“’939 Patent”), 8,010,740 (“’740 Patent”), and
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`9,135,190 (“’190 Patent”).
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`A. The ’939 Patent
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`The ’939 Patent is entitled “Method and system for controlling data in a computer system
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`in the event of a power failure” and relates to “a system and method for controlling data in such a
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`system when the system loses external power..” ’939 Patent at 1:9–11.
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`In the event of loss of power to a computer system, to prevent the loss of data written to
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`volatile memory, the ’939 Patent discloses using “super-capacitors” as a temporary power source
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`1
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`KIOXIA Ex-1008, Page 1
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 2 of 48
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`to allow data to be safely written from volatile memory (which does not retain data after a loss of
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`power) to non-volatile memory (which does retain data after a loss of power). Id. at 2:33–37.
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`Figure 1 depicts an embodiment of the invention:
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`The specification describes that when there is power, i.e., external power source 22 is providing
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`power to the computer system, upconverter 32 charges super capacitor array 34. Id. at 3:39–41.
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`When there is a loss of power, upconverter 32 deactivates and down-converter 42 activates, which
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`allows super capacitor array 34 to provide power to compute engine 28. Id. at 5:19–22. The
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`2
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`KIOXIA Ex-1008, Page 2
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 3 of 48
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`specification describes that once the super capacitors discharge to a “predetermined level,” the
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`down converter has insufficient voltage differential to continue proper operation and shuts down.
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`Id. at 6:40–44.
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`B. The ’740 Patent
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`The ’740 Patent is entitled “Optimizing memory operations in an electronic storage device”
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`and relates to “solutions for optimizing memory operations in a memory system suitable for use in
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`an electronic storage device.” ’740 Patent at 1:16–18. The ’740 Patent describes using a
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`“improved mapping table” to “increase[e] the likelihood that, in response to an I/O transaction
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`initiated by a host, the operational load imposed on the storage device by these memory operations
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`will be optimally distributed across different storage device resources, such as by interleaving or
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`parallel memory operations, reducing memory operation latency, increasing operational device
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`efficiency, or both.” Id. at 2:14–21. Figure 2 depicts an exemplary mapping table. Id. at 5:27–
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`30.
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`3
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`KIOXIA Ex-1008, Page 3
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`The specification uses the acronyms LBA and PBA for logical block address, which is the address
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`that is part of a logical addressing system used by a host, and physical block address, which is a
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`unique addressable physical memory location, respectively. Id. at 6:37–40, 5:30–33. The
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`specification describes that each row of the mapping table contains the LBA field and PBA fields
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`(access parameter fields 30: bus identifier field 34, FDE identifier fields 36, and group identifier
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`field 38; and memory index field 32). Id. at 5:29–38. The specification describes that the
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`“mapping association among LBA sets and PBAs increases the likelihood that memory operations
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`resulting from an I/O transaction request will be optimized because if these memory operations
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`4
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`KIOXIA Ex-1008, Page 4
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`involve data accesses associated with contiguous LBA sets these data accesses will in likelihood
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`occur on different PBAs.” Id. at 7:9–14.
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`C. The ’190 Patent
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`The ’190 Patent is entitled “Multi-profile memory controller for computing devices” and
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`relates to “multi-profile memory controllers and computing devices, such as solid-state storage
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`devices, that use these multi-profile memory controllers..” ’190 Patent at 1:17–19. The memory
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`controller disclosed in the ’190 Patent varied how reads and writes were performed on different
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`memory locations or devices, which was an improvement over the prior art. Id. at 1:54–60. To
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`accomplish this, the specification describes that the multi-profile memory controller uses different
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`device profiles to perform memory transactions. Id. at 2:44–47. Figure 2A depicts an exemplary
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`device profile.
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`II.
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`LEGAL STANDARD
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`A. General principles
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`
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`5
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`KIOXIA Ex-1008, Page 5
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal
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`Circuit has counseled that “[t]he standards for finding lexicography and disavowal are exacting.”
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her
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`own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term”
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`and “‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum
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`Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution
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`disclaimer precludes a patentee from recapturing a specific meaning that was previously
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`disclaimed during prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
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`2003). “[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing
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`actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26.
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`Accordingly, when “an applicant’s statements are amenable to multiple reasonable interpretations,
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`they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725
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`F.3d 1315, 1326 (Fed. Cir. 2013).
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`6
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`KIOXIA Ex-1008, Page 6
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`A construction of “plain and ordinary meaning” may be inadequate when a term has more
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`than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve
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`the parties’ dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361
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`(Fed. Cir. 2008). In that case, the Court must describe what the plain-and-ordinary meaning is.
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`Id.
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . ., particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
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`(Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent a clear indication in
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`the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
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`v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
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`Technical dictionaries may be helpful, but they may also provide definitions that are too broad or
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`not indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be
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`helpful, but an expert’s conclusory or unsupported assertions as to the meaning of a term are not.
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`Id.
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`B. Claim differentiation
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`Under the doctrine of claim differentiation, a court presumes that each claim in a patent
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`has a different scope. Phillips, 415 F.3d at 1314-15. The presumption is rebutted when, for
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`example, the “construction of an independent claim leads to a clear conclusion inconsistent with a
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`7
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`KIOXIA Ex-1008, Page 7
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`dependent claim.” Id. The presumption is also rebutted when there is a “contrary construction
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`dictated by the written description or prosecution history.” Seachange Int’l., Inc. v. C-COR, Inc.,
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`413 F.3d 1361, 1369 (Fed. Cir. 2005). The presumption does not apply if it serves to broaden the
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`claims beyond their meaning in light of the specification. Intellectual Ventures I LLC v. Motorola
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`Mobility LLC, 870 F.3d 1320, 1326 (Fed. Cir. 2017).
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`C. Indefiniteness
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`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly
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`point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2.
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`A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about
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`the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc.,
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`572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as
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`indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective of one of
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`ordinary skill in the art as of the time the application was filed. Id. at 911.
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`In the context of a claim governed by § 112, ¶ 6, the claim is indefinite if the claim fails to
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`disclose adequate corresponding structure to perform the claimed functions. Williamson, 792 F.3d
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`at 1351–52. The disclosure is inadequate when one of ordinary skill in the art “would be unable
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`to recognize the structure in the specification and associate it with the corresponding function in
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`the claim.” Id. at 1352. Computer-implemented means-plus-function claims are indefinite unless
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`the specification discloses an algorithm to perform the function associated with the limitation.
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`Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1319 (Fed. Cir. 2012).
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`8
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`KIOXIA Ex-1008, Page 8
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`D. Means-Plus-Function Claiming
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`A patent claim may be expressed using functional language. See 35 U.S.C. § 112 ¶ 6.1
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 (Fed. Cir. 2015). In particular, § 112,
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`¶ 6 provides that a structure may be claimed as a “means . . . for performing a specified function”
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`and that an act may be claimed as a “step for performing a specified function.” Masco Corp. v.
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`United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
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`The presumption is that terms reciting “means” are subject to § 112, ¶ 6. Williamson, 792
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`F.3d at 1348. But if the term does not use the word “means,” then it is presumed not to be subject
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`to § 112, ¶ 6. Id. “That presumption can be overcome, but only if the challenger demonstrates
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`that the claim term fails to recite sufficiently definite structure or else recites function without
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`reciting sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua
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`Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020) (internal quotations removed) (citing Williamson,
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`792 F.3d at 1349). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the
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`limitation, read in light of the remaining claim language, specification, prosecution history, and
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`relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the
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`art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014), overruled on other grounds by
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`Williamson, 792 F.3d at 1349.
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`When § 112 ¶ 6 applies, it limits the scope of the functional term “to only the structure,
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`materials, or acts described in the specification as corresponding to the claimed function and
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`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
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`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
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`1The American Invents Act of 2011 changed the numbering of the relevant subsection from § 112, ¶ 6 to § 112(f).
`Because the substance of the subsection did not change, the undersigned will refer to the relevant subsection as § 112,
`¶ 6 in keeping with the numeration at the time of the patent filing.
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`9
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`KIOXIA Ex-1008, Page 9
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 10 of 48
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`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
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`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
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`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
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`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
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`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
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`inquiry is not merely whether a structure is capable of performing the recited function, but rather
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`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
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`Id. The corresponding structure “must include all structure that actually performs the recited
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`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
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`Cir. 2005). However, § 112, ¶ 6 does not permit “incorporation of structure from the written
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`description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
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`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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`III. LEGAL ANALYSIS
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`A. Term #1: “predetermined level”
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`
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`Term
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`“predetermined level”
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`U.S. Patent No. 6,496,939,
`Claims 1, 10
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`
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`The Parties’ Positions:
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`Plaintiff’s Proposed
`Construction
`Plain and ordinary meaning.
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`
`Defendant’s Proposed
`Construction
`“a preset minimum operating
`voltage necessary for proper
`operation, in which the super
`capacitors are not fully
`discharged”
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`Defendants contend that its construction is correct because (1) the patentee acted as its own
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`lexicographer and (2) the patentee relied on this specific meaning during prosecution to
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`differentiate the invention from the prior art. Opening at 4.
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`10
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`KIOXIA Ex-1008, Page 10
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 11 of 48
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`With respect to the former, Defendants contend that the specification “explains that the
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`‘predetermined level’ is a preset minimum operating voltage at which ‘the down-converter has
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`insufficient voltage differential to continue proper operation and shuts down.’” Id. at 3 (quoting
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`’939 patent at 5:39–43 (emphasis in Defendants’ brief); citing ’939 Patent at 6:40–44, 5:44–48,
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`5:48–52, 6:49–53). Defendants contend that the specification explains that if the predetermined
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`voltage level were allowed to fall below the minimum operating voltage of the computer system,
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`the computer system might run with “unpredictable and potentially serious results.” Id. (quoting
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`’939 Patent at 5:44–48 (emphasis in Defendants’ brief); citing ’939 Patent at 6:45–49). Defendants
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`contend that this would undermine one of the goals of the invention (to correctly store large
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`amounts of newly written and modified data) and also has the advantage of reducing the time
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`needed to recharge the super-capacitor. Id. (citing ’939 Patent at 2:33–41, 5:48–52, 6:49–53).
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`With respect to the latter, Defendants contend that Applicant stated that setting the
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`predetermined voltage level above the minimum operative voltage of the computer system
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`improves the “performance and reliability of the computer system” and decreases the time needed
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`to recharge the super capacitor. Id. at 3–4 (quoting Opening, Ex. I at 7 (amend. Filed on May 8,
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`2002)).
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`Defendants contend that Plaintiff’s proposed construction of plain-and-ordinary meaning
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`is incorrect in light of the patentee’s lexicography and reliance on a critical feature that
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`differentiated the prior art during prosecution. Id. at 4.
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`In its response, Plaintiff contends that “predetermined level” is an “ordinary term that both
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`laypersons and POSITAs readily understand.” Response at 3 (citing Ferguson Beauregard/Logic
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`Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1340 (Fed. Cir. 2003)).
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`Plaintiff contends that the claims uses the term consistent with its plain meaning. Id. at 3–4.
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`11
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`KIOXIA Ex-1008, Page 11
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 12 of 48
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`Plaintiff contends that Defendants have not provided any reason for diverging from that
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`plain meaning. Id. at 4 (citing cases). With respect to Defendants’ lexicography argument,
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`Plaintiff contends that “there is no definition of ‘predetermined level’ in the portions of the
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`specification cited in [Defendants’] brief” nor do any of the passages cited by Defendants rise to
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`the level of a clear and unmistakable disclaimer. Id. at 5.
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`With respect to Defendants’ history argument, Plaintiff contends that the statements cited
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`by Defendants only distinguished a prior art reference cited by Examiner. Id. Plaintiff further
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`contends that Applicant’s statements were “exemplary,” e.g., “can be set,” which further indicates
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`that Applicant did not disavow any claim scope. Id.
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`Plaintiff finally contends that “predetermined level” is used in contemporary patents in the
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`same subject matter. Id. (citing Intel’s patents).
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`In their reply, Defendants contend that Plaintiff does not dispute that (1) the “specification
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`describes a predetermined level as a preset minimum operating voltage at which the down-
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`converter has insufficient voltage differential to continue proper operation and shuts down,” (2)
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`“the specification establishes the importance of setting the predetermined level at a voltage
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`necessary for proper operation,” and (3) “a threshold set below a minimum operating voltage
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`necessary for proper operation would fatally undermine the ’939 patent’s stated goals.” Reply at
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`1 (citing’939 patent at 5:39,–43, 5:44–48, 6:45–49, 2:33–41). Based on those assertions,
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`Defendants contend that the patentee acted as their own lexicographer. Id. Defendants further
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`contend that specification “establishes the critical importance of having the predetermined level
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`fixed at a preset minimum operating voltage necessary for proper operation confirms Defendants’
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`proposed construction.” Id. at 1-2 (citing ’939 Patent at 5:44–48, 6:45–49; citing cases).
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`12
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`KIOXIA Ex-1008, Page 12
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 13 of 48
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`With respect to the prosecution history, Defendants contend that Plaintiff admits that it
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`distinguished prior art from the claimed invention based on the limitations described in
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`Defendants’ proposed construction. Id. at 2.
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`With respect to the other patents Plaintiff cites to, Defendants contend that those are
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`unrelated patents which merit “little consideration.” Id.
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`In its sur-reply, Plaintiff contends that Defendants have not identified anything that
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`“compels the import of the two limitations in their construction” nor anything in the specification
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`or prosecution history that is lexicography. Sur-Reply at 1. Plaintiff contends that Defendants’
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`proposed construction improperly attempts to limit the claim scope to a single embodiment. Id. at
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`1–2 (citing cases). With respect to Defendants’ argument that its proposed construction
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`accomplishes the stated goals of the ’939 Patent, Plaintiff contends that Defendants
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`mischaracterize the goals of the patent. Id. at 2. More specifically, Plaintiff contends that the
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`passage that discusses the goals of the patent does not mention “minimum operating voltage
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`necessary for proper operation.” Id.
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`
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`The Court’s Analysis:
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`After reviewing the parties’ arguments and considering the applicable law, the Court agrees
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`with Plaintiff and finds that the proper construction is plain-and-ordinary meaning for the reasons
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`that follow. First, the “heavy presumption” is that terms should be construed according to their
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`plain-and-ordinary meaning. Azure Networks, 771 F.3d at 1347.
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`Second, the Court disagrees with Defendants that the patentees acted as their own
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`lexicographer as the evidence that Defendants provide does not meet the “exacting” standard
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`necessary for finding lexicography. Hill-Rom Servs., 755 F.3d at 1371. More specifically, this
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`13
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`KIOXIA Ex-1008, Page 13
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 14 of 48
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`term appears in the specification twice, but neither time does it recite any of the language in
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`Defendants’ proposed construction. ’939 Patent at 5:39–43 (“Finally, once the super-capacitors
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`discharge to a predetermined level, the down-converter has insufficient voltage differential to
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`continue proper operation and shuts down, thus turning off the power to the computer system, via
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`step 110.”), 6:40–44 (“Finally, once the super-capacitors discharge to a predetermined level, the
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`down-converter has insufficient voltage differential to continue proper operation and shuts down,
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`thus turning off the power to the computer system, via step 310.”). Accordingly, the Court
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`concludes that the patentee did not act as their own lexicographer as the patentee did not “clearly
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`set forth a definition of the disputed claim term other than its plain and ordinary meaning” nor
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`“clearly express[ed] an intent to redefine the term.” Hill-Rom Servs., 755 F.3d at 1371.
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`Third, the Court disagrees with Defendants that Applicant disclaimed claim scope during
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`prosecution. A disclaimer needs to be clear and unambiguous. Liebel-Flarsheim, 358 F.3d at 900.
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`But here, the passages from the prosecution history that Defendants cite to merely describes that
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`the prior art does not disclose various limitations of the claimed invention. Computer Docking
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`Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (“Prosecution disclaimer does
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`not apply, for example, if the applicant simply describes features of the prior art and does not
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`distinguish the claimed invention based on those features.”).
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`Fourth, the Court concludes that “predetermined level” is a simple, non-technical claim
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`term that is easily understood by a lay jury. By contrast, the Court concludes that Defendants’
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`proposed construction—”a preset minimum operating voltage necessary for proper operation, in
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`which the super capacitors are not fully discharged”—is both more technical and more
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`complicated, and thus it is unlikely to help a lay jury understand the meaning of this claim term.
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`Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004) (“The district court simply
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`14
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`KIOXIA Ex-1008, Page 14
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 15 of 48
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`must give the jury guidance that can be understood and given effect by the jury once it resolves
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`the issues of fact which are in dispute.”).
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`Therefore, for the reasons described above, the Court’s final construction for
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`“predetermined level” is plain-and-ordinary meaning.
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`
`
`
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`B. Term #2: “means for deactivating the plurality of super capacitors to cut off
`power to the computing engine based upon the plurality of super capacitors
`discharging to a predetermined level”
`
`Defendant’s Proposed
`Construction
`Indefinite under 35 U.S.C. §
`112: Lacks corresponding
`structure.
`
`
`Term
`
`“means for deactivating the
`plurality of super capacitors
`to cut off power to the
`computing engine based upon
`the plurality of super
`capacitors discharging to a
`predetermined level”
`
`U.S. Patent No. 6,496,939,
`Claim 10
`
`
`Plaintiff’s Proposed
`Construction
`Function: deactivating the
`plurality of super capacitors
`to cut off power to the
`computing engine based upon
`the plurality of super
`capacitors discharging to a
`predetermined level.
`
`Structure: Col. 3:3-12, 3:28-
`4:8, 5:35-42, 6:37-44, Figs. 1,
`3, 5, of the ’939 Patent, and
`equivalents thereof.
`
`
`
`The Parties’ Positions:
`
`Defendants contend that because the specification does not “clearly link” any structure to
`
`the recited function of “deactivating the plurality of super capacitors to cut off power to the
`
`computing engine based upon the plurality of super capacitors discharging to a predetermined
`
`level,” the term is indefinite. Opening at 5. Defendants contend that the specification describes
`
`“deactivating” using “generic functional language,” but that does not describe structure. Id. at 6
`
`(citing cases). Defendants further contend that the specification does not disclose a structure that
`
`“deactivates” a plurality of super capacitors, but only discusses “deactivating” an up-converter and
`
`
`
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`KIOXIA Ex-1008, Page 15
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 16 of 48
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`a down-converter. Id. at 6–7. Defendants contend that the specification does not link deactivation
`
`an up-converter and a down-converter with the deactivation of a plurality of super capacitors. Id.
`
`at 7. Accordingly, Defendants contend that the specification does not “clearly link” any structure
`
`to the recited function. Id. at 8.
`
`Defendants contend that Plaintiff’s proposed construction is a “laundry list of figures and
`
`paragraphs, which is an “absurdly overinclusive designation fails to identify a sufficiently definite
`
`structure that corresponds to the claimed function.” Id. (quoting Bell N. Research, LLC v. Coolpad
`
`Techs., Inc., No. 18-CV-1783-CAB-BLM, 2019 WL 3766688, at *6 (S.D. Cal. Aug. 9, 2019)).
`
`Defendants contend that Plaintiff’s citations either make “no mention of ‘deactivating’ anything,
`
`much less a super capacitor,” or discuss the deactivation of other components, e.g., up-converter
`
`or down-converter. Id. at 9.
`
`In its response, Plaintiff contends that because “activating” and “deactivating” are “two
`
`sides of the same coin,” disclosures of structure, acts, and methods relevant to “activating” are
`
`relevant to “deactivating.” Response at 6, 8 n.4. Plaintiff contends that Defendants did not
`
`challenge the “activating” limitation in Claim 10 given this disclosure. Id. at 6–7.
`
`Plaintiff contends that the specification discloses circuity (charge level sensors 30, up-
`
`converter 32, thermal heater 36, temperature sensors & control 38, and down-converter 42) that is
`
`the corresponding structure. Id. at 7–8. More specifically, Plaintiff contends that once the down-
`
`super capacitors have discharged to a predetermined level, the down converter shuts down, thus
`
`turning off power to the computer system. Id. (quoting ’939 Patent at 5:17–43). Plaintiff contends
`
`that once the down-converter turns off, other circuit elements may turn on. Id. at 8. Based on this,
`
`Plaintiff contends that Defendants cannot meet their burden of showing by clear and convincing
`
`
`
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`KIOXIA Ex-1008, Page 16
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 17 of 48
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`evidence that the specification lacks “disclosure of structure sufficient to be understood by one
`
`skilled in the art as being adequate to perform the cited function.” Id. (citing cases).
`
`Plaintiff contends that the above disclosures contradict Defendants’ argument that the
`
`specification does not disclose the corresponding structure. Id. at 8–9. Plaintiff further contends
`
`that it is not clear what Defendants think “deactivating” capacitors means in this context and what
`
`structure satisfies that functionality. Id. at 9.
`
`Plaintiff contends that the claim language explains that deactivating a capacitor means to
`
`cut off power to the computing engine. Id.
`
`Plaintiff contends that Defendants do not provide expert evidence regarding indefiniteness
`
`which is “fatal” to their case. Id. at 8.
`
`In their reply, Defendants contend that the passages Plaintiff cites does not describe
`
`deactivating any component, let alone the super capacitor. Reply at 3. Defendants contend that
`
`Plaintiff never explains what “deactivating a plurality of supercapacitors” means and that Plaintiff
`
`is not able to do so because the patent does not address this issue, let alone identify any structure
`
`that performs this function. Id. Defendants contend that the specification only indicate that charge
`
`level sensors 30 “inform the computer system that the super-capacitor voltage has fallen below the
`
`fully charged and partially charged levels,” but does not indicate that they “deactivate” the super-
`
`capacitors. Id. at 4 (quoting ’939 patent at 5:36–39, 6:37–40). Defendants contend that down-
`
`converter simply converts a high voltage into a lower voltage and that there is nothing to indicate
`
`that the down-converter “deactivates” the super capacitors. Id. Defendants contend that Plaintiff
`
`does not point to any structure that is “clearly linked” to the claimed function and thus the claim
`
`is indefinite. Id. (citing cases).
`
`
`
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`KIOXIA Ex-1008, Page 17
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`Case 6:22-cv-00331-ADA Document 54 Filed 02/16/23 Page 18 of 48
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`Defendants contend that Plaintiff’s argument that “means for activating” and “means for
`
`deactivating” are two sides of the same coin is flawed because different terms are presumed to
`
`have different meanings. Id. at 4–5 (Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp.,
`
`533 F.3d 1362, 1371 (Fed. Cir. 2008)). Defendants further contend that the claim language
`
`describes that “activating” describes power being removed from the computer system while
`
`“deactivating” describes the super capacitor discharging (into the computer system). Id. at 5.
`
`Defendants contend that Plaintiff’s suggestion that expert testimony is required for a
`
`finding of indefiniteness “misstates the applicable law.” Id. (citing cases).
`
`In its sur-reply, Plaintiff contends that the plain meaning of “deactivating the plurality of
`
`super capacitors” is to make them electrically inactive. Sur-Reply at 3. Plaintiff contends that a
`
`construction would not help a POSITA or jury. Id. Plaintiff contends that
`
`structure consists of the “charge level sensors 30,” which informs the computer
`system whether the plurality of capacitors have discharged to a predetermined level,
`the “down converter DC 42,” which turns off or shuts down thereby disconnecting
`the plurality of super capacitors from the rest of the system and accordingly
`“cut[ting] off power to the computing engine,” and other related circuitry (like the
`power isolator and up converter that revert to their original states).
`
`
`Id. at 4. Plaintiff contends that