IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
February 21, 2006
HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., AND HYNIX SEMICONDUCTOR DEUTSCHLAND GMBH, PLAINTIFFS,
RAMBUS INC. DEFENDANT.
The opinion of the court was delivered by: Ronald M. Whyte United States District Judge
ORDER DENYING HYNIX'S MOTION FOR PARTIAL RECONSIDERATION OF CLAIM CONSTRUCTION AND RELATED SUMMARY JUDGMENT ORDERS [Re Docket No. 1422]
On October 3, 2005 this court granted Hynix Semiconductor Inc., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. LTD, and Hynix Semiconductor Deutschland GmbH (collectively "Hynix") leave to file a motion for reconsideration. Hynix urges the court to reconsider its (1) November 11, 2004 Claim Construction Order ("Claim Construction Order"), (2) January 4, 2005 Order Denying Hynix's Motion for Summary Judgment of Non-Infringement Under Hynix's Proposed Construction of the Term 'Device,' or, In the Alternative, Invalidity Under Rambus's Proposed Construction ("January 4, 2005 Order"), and (3) January 26, 2005 Clarified and Corrected Order On Rambus's Motion for Summary Judgment ("January 26, 2005 Order") in light of the Federal Circuit's decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). For the reasons set forth below, the court denies Hynix's motion.
In Rambus, Inc. v. Infineon Techs. AG, 318 F.3d 1081 (Fed. Cir. 2003) ("Infineon II"), Rambus sued Infineon for infringement of the same family of patents that are at issue in this case.*fn1
The district court held that the patentees acted as their own lexicographer by redefining the term "bus" to mean a "multiplexed bus": a single set of signal lines that carries three different kinds of information. Id. at 1094. The Federal Circuit determined that the district court erred by not giving "bus" its ordinary meaning. Id. The court explained that the term "is very common in the electrical arts" and cited The New IEEE Standard Dictionary of Electrical and Electronic Terms 141 (5th ed. 1993) for the proposition that a "bus" is "a set of signal lines . . . to which a number of devices are connected, and over which information is transferred between devices." Id. The court admitted that it could plausibly interpret two uses of "bus" in the specification to mean a "multiplexed bus." Id. Nevertheless, the court held that the patentees did not "clearly disclaim or disavow" the full scope of the term "bus." Id. at 1095. The court noted that because the patent originally claimed that only some busses were multiplexed, the patentee must have understood the majority of the busses not to be multiplexed. Id. The court also explained that the PTO had divided Rambus' patents into two groups: a multiplexing group and a latency group. Id. Rambus had chosen to prosecute claims from the latency group, which "do[ ] not require [a] plurality of conductor[s to] be[ ] multiplexed to receive an address . . . ." Id. (alteration added). Thus, the court declined to read a multiplexing limitation into the term "bus."
Claim construction in this case focused on the word "device." Rambus argued that "device" does not warrant an independent construction. Instead, Rambus contended that the court must read "device" in conjunction with the other phrases with which it appears: "integrated circuit device," "memory device," "synchronous memory device," and "synchronous semiconductor memory device." Hynix, on the other hand, asserted that a "device" is "[e]lectronic circuits or components physically connected in a unit, with an interface to a bus having a multiplexed set of signal lines used to transmit substantially all address, data, and control information, and containing substantially fewer lines than the number of bits in a single address."
The court sided with Rambus. The court noted that Hynix's interpretation of "device" resembled its interpretation of "bus" in Infineon II. The court held that Infineon II's reasoning suggested that Hynix's proposed construction erroneously imports a multiplexing limitation:
Here, rather than applying a multiplexing limitation to the bus, Hynix asserts that multiplexing should limit the term "device." It remains unclear how "[e]lectronic circuits or components physically connected in a unit, with an interface to a bus having a multiplexed set of signal lines" is materially different from limiting the term "bus" to a "multiplexed bus." Although the focus is on the memory chip itself rather than its operational means of connection to the bus, the end result remains the same -- the bus upon which the devices reside in the patents at issue would necessarily be a multiplexed bus. This end result, a multiplexed bus as part of the claim limitations, was rejected by the Federal Circuit. *** Hynix relies on the Summary of the Invention, the Detailed Description, and the recitation of the objects of the invention in support of its contention that Rambus has acted as its own lexicographer in defining "device." This is largely the same material in the specification that the Federal Circuit found inadequate to support the multiplexing limitation on the term "bus." In addition, U.S. Patent No. 6,101,152 ("the '152 patent") descends from the same '580 patent that does not require a multiplexing bus. The court, therefore, does not read a multiplexed bus limitation into the term "device." "Device" must be construed in the context of "integrated circuit device," "memory device," or "synchronous memory device."
Claim Construction Order at 9:8-22 (internal citations omitted).
The Claim Construction Order and Infineon II factored heavily into the January 4, 2005 and January 26, 2005 Orders. First, Hynix moved for summary judgment of non-infringement based on the assumption that the court would adopt its interpretation of "device." Because the court did not do so, it denied Hynix's motion. January 4, 2005 Order at 1:6-7. In the alternative, Hynix argued that accepting Rambus' construction of "device" would render the patents invalid for failing to satisfy 35 U.S.C. § 112(1)'s written description requirement. Hynix asserted that a person of ordinary skill in the art would read the patent to cover only a multiplexed bus. However, Hynix noted, Rambus' interpretation did not limit the patent in this manner. The court disagreed. The court reasoned that Infineon II "tends to suggest that the specification supports inventions which do not include a multiplexed bus." Id. at 4:16-17. The court also noted that Rambus' expert opined "that one skilled in the art would understand that the patents could be used with any invention and are not limited to the multiplexed bus of the preferred embodiment." Id. at 4:22-25. Although the court did not accept Rambus' contentions wholesale, it nevertheless held that Hynix had failed to satisfy its burden of proving invalidity:
Notwithstanding Infineon [II]and Rambus's contentions, it remains unclear whether, at the time the of the '898 application, a person of ordinary skill in the art would have been able to recognize through the written description that a non-multiplexed bus was covered. The answer depends in large part upon what the relevant state of the art was at the time the application was first filed in 1990 and requires resolution of factual questions. The evidence currently before this court does not show by clear and convincing evidence that, at the time of the '898 application, a non-multiplexed bus was not supported by the specification. As Hynix has not overcome the statutory presumption of validity, this court does not find as a matter of law that Rambus's patents are invalid for failure to satisfy the written description requirement. Accordingly, Hynix's motion for summary judgment is denied.
Id. at 4:25-5:8. Second, Rambus moved for summary judgment of infringement on several Hynix patents. Partially because the Claim Construction Order determined that "there is not a separate 'device' limitation that Rambus must show is met by Hynix's accused products," January 26, 2005 Order at 4:7-8, the court granted Rambus' motion on claims (1) 1, 5-7, 12, 26, 28, 30, 33, 34, and 38 of U.S. Patent No. 6,378,020, (2) 14-16 of U.S. Patent No. 6,452,863, (3) 1, 3, 9, 12, 14, 26, 28, 31, 37 and 40 of U.S. Patent No. 6,426,916, and (4) 31, 32, 35, 36 and 38 of U.S. Patent No. 6,378,020. Id. at 8:2-10.
In Phillips, the Federal Circuit, sitting en banc, reaffirmed "basic principles of claim construction" with respect to the "[t]he role of the specification," but explained that "the use of dictionaries . . . requires clarification." Phillips, 415 F.3d at 1312. The court began by reiterating the bedrock principle that a court must view claim terms through the eyes of one of ordinary skill in the art. Id. at 1313-14. The court explained that a court's choice of interpretative tools should depend on the nature of the claim at issue:
In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. In such circumstances, general purpose dictionaries may be helpful. In many cases that give rise to litigation, however, determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art. Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to 'those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.' Those sources include 'the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'
Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). The court stressed the importance of the specification, calling it "'the single best guide to the meaning of a disputed term.'" Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In addition, the court noted that the patentee has substantial leeway to "dictate[ ] the correct claim scope," either by (1) imbuing a term with unique meaning or (2) intentionally disclaiming or disavowing a potential interpretation of the claims. Id. The court also commented that the prosecution history, though generally "less useful" than the specification, can sometimes show that the patentee narrowed the claim. Id. at 1317. Finally, the court explained that extrinsic evidence, though "'less significant than the intrinsic record' . . . can be useful." Id. (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). The court singled out technical dictionaries as being among the most helpful forms of such evidence. Id. at 1318.
The court then overruled a "somewhat different approach to claim construction" exemplified by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002). Phillips, 415 F.3d at 1319. Texas Digital instructed courts to compile all possible meanings of a term from general purpose dictionaries, technical dictionaries, and encyclopedias. Texas Digital, 308 F.3d at 1202-03. Courts then looked to the specification and prosecution history to winnow down this broad universe. Id. at 1204. Courts eliminated a dictionary definition if the patentee had (1) set forth "an explicit definition of the term different from its ordinary meaning," or (2) "disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Id. According to Phillips, the Texas Digital methodology improperly "limit[ed] the role of the specification in claim construction." Phillips, 415 F.3d at 1320. Nevertheless, Phillips acknowledged that "the purpose underlying the Texas Digital line of cases-to avoid the danger of reading limitations from the specification into the claim-is sound."
Id. at 1323. The court concluded by emphasizing that courts continue to enjoy discretion to tailor their claim constructions to the particular patents at issue:
[T]here is no magic formula or catechism for conducting claim construction. Nor is the court barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence. For example, a judge who encounters a claim term while reading a patent might consult a general purpose or specialized dictionary to begin to understand the meaning of the term, before reviewing the remainder of the patent to determine how the patentee has used the term. The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law.
Phillips, 415 F.3d at1324 (internal citations omitted).
"[A] motion for reconsideration should not be granted, absent highly unusual circumstances, unless the district court is presented with newly discovered evidence, committed clear error, or if there is an intervening change in the controlling law." 389 Orange Street Partners v. Arnold, 179 F.3d 656, 665 (9th Cir. 1999). According to Hynix, Infineon II followed the now-discredited Texas Digital methodology by "look[ing] first to the dictionary definition of 'bus' to find an 'ordinary meaning' and only then consider[ing] the specification and file history to determine whether there was clear evidence of disavowal of the dictionary definition." Id. at 8:24-26. Hynix also contends that this court must reconsider the Claim Construction Order because it "afforded Infineon II stare decisis effect." Id. at 1:11-14.
These arguments are unpersuasive. First, the court does not believe that Phillips constitutes "an intervening change in the controlling law." For the most part, Hynix does not contend that Phillips directly casts doubt on the Claim Construction Order. Instead, Hynix posits that Phillips undermines Infineon II, which, in turn, calls the Claim Construction Order into question. It is one thing for a court to re-evaluate its own reasoning and conclusions in light of new precedent. It is quite another thing for a court to hold that a different court would do the same. Such speculation is especially inappropriate where, as here, the alleged change in the law is not the reformulation of a substantive rule, but a subtle alteration in the process by which courts engage in claim construction.
Indeed, the court is aware of no case that has granted a motion for reconsideration in similar circumstances.*fn2
Second, even assuming that Hynix's motion is proper, its attack on Infineon II lacks merit. Phillips precludes a particular method of claim construction: collecting dictionary definitions and then eliminating those that are inconsistent with the specification. See Phillips, 415 F.3d at 1320 (Texas Digital incorrectly "limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term"). Infineon II did not employ this methodology. Hynix notes that Infineon II "began, as instructed by Texas Digital, with an IEEE dictionary definition of the term 'bus' . . . ." Mot. Reconsid. at 8:15-16. Yet Phillips expressly permits courts to "consult a general purpose or specialized dictionary to begin to understand the meaning of the term, before reviewing the remainder of the patent to determine how the patentee has used the term." Phillips, 415 F.3d at1324. In addition, rather than using the dictionary to assemble several potential meanings for an esoteric term, Infineon II cited the dictionary to show that the district court's construction of "bus" was fundamentally at odds with how a personal of ordinary skill in the art would understand the term. Infineon II, 318 F.3d at 1094 ("[t]he term 'bus' is very common the electrical arts and has a well-recognized meaning"). Phillips held that dictionaries remain useful for this purpose. See Phillips, 415 F.3d at 1321 ("[d]ictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words").
Hynix argues that Phillips suggests that Infineon II erred by examining whether the patentee "clearly disclaim[ed] or disavow[ed]" the ordinary meaning of "bus." Infineon II, 318 F.2d at 1095.
Hynix cites Nystrom v. TREX Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005) for the proposition that Phillips "dispensed with the doctrine that a clear disavowal must necessarily be present to justify departure from the ordinary meaning of a claim term . . . ." Rep. Supp. Mot. Reconsid. at 3:13-17. Nystrom does not support Hynix's contention. In that case, the patentee relied upon several expansive dictionary definitions to contend that the term "board" encompassed non-wooden material. Nystrom, 424 F.3d at 1142. The patentee asserted that he was entitled to the full range of these definitions because there was no clear disavowal in the intrinsic evidence. Id. The Federal Circuit rejected this argument, reasoning that the only support for the patentee's proposed construction came from extrinsic evidence:
Nystrom consistently used the term 'board' to refer to wood cut from a log. Although there was no clear disavowal of claim scope, there was nothing in the intrinsic record to support the conclusion that a skilled artisan would have construed the term 'board' more broadly than a piece of construction material made from wood cut from a log. *** In this case, both parties acknowledge the ordinary meaning of 'board' as 'a piece of sawed lumber.' Nystrom, however, seeks to broaden the term 'board' to encompass relatively obscure definitions that are not supported by the written description or prosecution history. Broadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in Phillips.
Id. at 1145-46. Thus, Nystrom merely suggests that courts cannot broaden the ordinary meaning of a term based on nothing more than a dictionary definition. Infineon II (1) merely applied the ordinary meaning of a term and (2) relied on the specification and prosecution history to reach its conclusion. See Infineon II, 318 F.3d at 1094-95 ("the remainder of the specification and prosecution history shows that Rambus did not clearly disclaim or disavow such claim scope in this case"). Even if Hynix is correct that a disclaimer or disavowal no longer needs to be clear to govern, Infineon II's heavy reliance on the intrinsic evidence suggests that it comports with Phillips.
Third, to the extent that Hynix addresses the Claim Construction Order independently, its arguments are unpersuasive. Like "bus," "device" is a commonly-used term. In fact, unlike "bus," "device" has a shared meaning that extends outside of the electrical arts. See, e.g., Black's Law Dictionary 483 (8th ed. 2004) (a "device" is "[a] mechanical invention").Hynix inadvertently illustrates this point by proposing a definition of "device" that, itself, incorporates the term "device." See Mot. Reconsid. at 1:15-18 ("device" means a "device with an interface to a multiplexed set of signal lines used to transmit substantially all address, data, and control information, and containing substantially fewer lines than the number of bits in a single address") (emphasis added). Phillips does not change the sensible tenet that some terms possess an "ordinary meaning" that is "readily apparent even to lay judges," making "claim construction . . . little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. The court's refusal to construe "device" independently gives the word its normal meaning by casting it as a neutral, catch-all term synonymous with "invention," "apparatus," or "thing made for a particular purpose." Of course, matters would be different if Hynix could point to convincing evidence in the specification that suggests that the patentees used the term "device" in a special way. But Hynix cannot. Instead, the patentees often referred to "devices" that could not connect to a multiplexed bus. For example, original claim 8 of the '898 patent refers to "other devices not on the bus." In any event, as noted above, Infineon II illuminates that there is no multiplexing requirement in Rambus' patents. Accordingly, the court denies Hynix's motion to reconsider the Claim Construction Order.
Finally, the court denies the aspects of Hynix's motion that are directed at the January 4 and January 26, 2005 Orders. The court's refusal to adopt Hynix's reading of "device" dooms Hynix's request that the court reconsider (1) the January 4 Order's denial of Hynix's motion for summary judgment of non-infringement, and (2) the January 26 Order's holding that "there is not a separate 'device' limitation Rambus must show is met by Hynix's accused products." Hynix also asks the court to reconsider the January 4 Order to the extent it denied Hynix's invalidity contentions. However, Hynix cannot-and does not-contend that Phillips changed the law with respect to invalidity issues.*fn3 The only basis upon which Hynix could thus properly seek reconsideration is if the court "committed clear legal error." 389 Orange Street Partners, 179 F.3d at 665. In addition, because Hynix's must prove at the summary judgment stage that any reasonable jury would find Rambus' patents invalid by clear and convincing evidence, its burden on this motion for reconsideration is extraordinarily high. The January 4 Order relied on Infineon II, Rambus' expert's opinion, and a lack of evidence with respect to whether a person of ordinary skill in the art would necessarily understand the specification to support a non-multiplexed bus. See January 4, 2005 Order at 4:7-5:5. Hynix fails to convince the court that its interpretation of these factors was clearly erroneous. Accordingly, the court denies this aspect of Hynix's motion as well.
For the foregoing reasons, the court denies Hynix's motion for reconsideration.