Appeal from the United States District Court for the Western District of Wisconsin in consolidated case nos. 07-CV-0605 and 07-CV-0607, Senior Judge Barbara B. Crabb.
The opinion of the court was delivered by: Prost, Circuit Judge.
Before PROST, REYNA, and WALLACH, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge REYNA.
SanDisk Corporation ("Sandisk") sued Kingston Technology Co., Inc. and Kingston Technology Corp. (collectively "Kingston") for infringement of U.S. Patent Nos. 5,719,808 ("'808 patent"), 6,149,316 ("'316 Patent"), 6,426,893 ("'893 patent"), 6,757,842 ("'842 patent"), and 6,763,424 ("'424 patent"). After the district court issued its claim construction opinion, SanDisk withdrew its infringement claims with respect to the '808 and '893 patents and claims 1, 6, 7, 10, 12, 15, 18, and 20 of the '842 patent. The district court granted Kingston's motion for summary judgment of non-infringement with respect to certain asserted claims of the '842, '316, and '424 patents. SanDisk dismissed its remaining infringement claims and has appealed the district court's judgment. For the reasons set forth below, we affirm in part, vacate in part, and remand for further proceedings.
The patents-in-suit all relate to various aspects of flash memory, which is the type of Electrically Erasable Programmable Read-Only Memory ("EEPROM") used, for example, in USB "thumb drives," computers, smart phones, and mp3 players. A benefit of flash memory is that it is "non-volatile"; in other words, it continues to store data even after the power source is removed. A thumb drive, for example, retains its saved data after being removed from a host computer and can be used to transport data from one computer to another.
A typical flash memory device includes one or more flash memory integrated circuit chips and a controller. Each flash memory chip contains memory cells for storing data. The cells are arranged as "pages" with multiple pages comprising a "block" of cells.
The flash memory device's controller accepts commands from the "host" device (e.g., the computer to which the USB thumb drive is attached) and then writes data to, or retrieves data from, the memory chip depending on the host device's command. To write and retrieve data, the controller must be able to identify where each piece of data is located in the system. This tracking of data is accomplished through "addressing." In general, the system uses two types of addresses: "physical" and "logical." The physical address refers to the physical location in the system where particular data is stored. The logical address is the identifier for a specific piece of data; it describes the data without regard to the data's physical location. Because a particular piece of data can change its physical location, a logical address may be associated with one physical address at one time and another physical address at a different time. The controller maps the logical address to the correct physical address, allowing the flash memory system to provide the correct data to the host device.
Unlike typical computer memory, the old data on the flash memory cell must be erased every time new data is written to the cell. The memory cells are erased an entire block at a time, while data is written to the cell one page at a time; the erasure of data, therefore, occurs in larger segments than the writing of data. These erase/write cycles wear down the memory cell until the cell eventually no longer reliably stores information. The patents-in-suit relate to various methods and systems for managing the data in the flash memory system, including methods for reducing the wear and tear on the flash memory cells.
SanDisk filed two complaints in the U.S. District Court for the Western District of Wisconsin against Kingston for patent infringement, and the district court consolidated the two actions on January 28, 2008. After the district court issued its claim construction order, SanDisk withdrew its infringement allegations with respect to claims 1, 6, 7, 10, 12, 15, 18, and 20 of the '842 patent and all asserted claims of the '893 and '808 patents. Both parties moved for summary judgment. The district court granted SanDisk's motion as to SanDisk's claim that Kingston was contributorily infringing claims 20, 24, 28, and 30 of the '424 patent by selling products containing a Phison PS3006 controller. With respect to all remaining asserted claims, the court found that Kingston was not infringing as a matter of law and ultimately entered judgment in favor of Kingston on those claims. After the district court's summary judgment order, the parties entered into a Stipulation and Order Dismissing Remaining Claims for Relief ("Stipulation"), whereby SanDisk dismissed without prejudice its remaining infringement claims involving the '424 patent, and Kingston dismissed without prejudice its related invalidity and enforceability counterclaims. J.A. 17754-55. SanDisk timely appealed, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).
On appeal, SanDisk argues that the district court erred in its construction of the following claim terms: "recording a relative time of programming . . ." in claims 1 and 3 of the '424 patent; "user data portion" and "overhead portion" in claims 1, 10, and 61 of the '842 patent and claim 67 of the '316 patent; "block characteristic information" in claims 1 and 65 of the '893 patent; and "designating a combination . . ." in claim 16 of the '808 patent. In addition to its claim construction arguments, SanDisk further contends that the district court legally erred in entering summary judgment of non-infringement in favor of Kingston as to claim 20 of the '424 patent and claim 79 of the '316 patent.
Claim construction is a question of law reviewed de novo. Cybor Corp v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). Claim terms generally are construed in accordance with the ordinary and customary meaning they would have to one of ordinary skill in the art in light of the specification and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc).
We review the district court's grant of summary judgment de novo, drawing all reasonable inferences in favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a).
As an initial matter, Kingston argues that we should not address certain claim construction issues presented by SanDisk because either we lack jurisdiction to review the district court's construction or SanDisk waived its right to advance its proposed construction on appeal. First, Kingston contends that we lack jurisdiction to review the district court's claim constructions related to claims 1 and 65 of the '893 patent, claim 16 of the '808 patent, and claims 1 and 10 of the '842 patent because SanDisk voluntarily withdrew those claims from the litigation without the parties stipulating to a judgment of non-infringement; thus, Kingston argues, there is no judgment for this court to review. We agree.
After the district court entered its claim construction order, SanDisk informed Kingston that it was no longer pursuing these claims. The district court never entered a separate order dismissing these claims, but it acknowledged in its summary judgment opinion that SanDisk had withdrawn them. J.A. 40. We, therefore, treat SanDisk's withdrawal of the claims as being akin to either a Federal Rule of Civil Procedure 15 amendment to the complaint, see Gronholz v. Sears, Roebuck & Co., 836 F.2d 515, 518 (Fed. Cir. 1987) ("[A] plaintiff's motion to dismiss a single claim of a multi-count complaint is properly treated as an amendment under . . . [Rule] 15."), or a Rule 41(a) voluntary dismissal of claims without prejudice, see Nilssen v. Motorola, Inc., 203 F.3d 782, 784 (Fed. Cir. 2000) ("In many instances the procedure for, and effect of, an amendment will be the same as a voluntary dismissal because of the similarities between the governing rules.") (internal quotations and citations omitted). Regardless of how we characterize the withdrawal, these claims are no longer at issue, and we accordingly have no final judgment before us with respect to these claims to review.
Our jurisdiction, however, is generally limited to final judgments: "Under the 'final judgment rule,' parties may only appeal a 'final decision of a district court.'" Spread Spectrum Screening L.L.C. v. Eastman Kodak Co., 657 F.3d 1349, 1354 (Fed. Cir. 2011) (quoting 28 U.S.C. § 1295(a)(1)). Here, SanDisk voluntarily withdrew the '893 and '808 patents and claims 1 and 10 of the '842 patent from this action, and it does not dispute that the district court never entered a stipulated judgment of non-infringement with respect to these claims. Thus, these claims do not present a current infringement controversy before this court. Without such a controversy, we lack Article III jurisdiction to decide these issues. See Streck, Inc. v. Research & Diagnostics Sys., Inc., 665 F.3d 1269, 1281 (Fed. Cir. 2012) ("It is well-established that, in patent cases, the existence of a 'case or controversy must be evaluated on a claim-by-claim basis.'"); Jang v. Boston Sci. Corp., 532 F.3d 1330, 1336 (Fed. Cir. 2008) (resolving claim construction issues "that do not actually affect the infringement controversy between the parties" would result in impermissible advisory opinion because "[t]he Supreme Court has explicitly held that Article III does not permit the courts to resolve issues when it is not clear that the resolution of the question will resolve a concrete controversy between interested parties").
As a result, we reject SanDisk's contention that the district court's ultimate entry of a final judgment confers appellate jurisdiction over these withdrawn claims. To the contrary, where, as here, a party's claim construction arguments do not affect the final judgment entered by the court, they are not reviewable. See Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1350 (Fed. Cir. 2006) (refusing to address claim construction arguments "pertinent only to dismissed claims of invalidity" because "[a]n appeal is not an opportunity to bring before the appellate court every ruling with which one or more of the parties disagrees without regard to whether the ruling has in any way impacted the final judgment").
Nor does the parties' Stipulation, relied upon by San-Disk, establish our jurisdiction. After the district court ruled on the summary judgment motions (and after SanDisk withdrew these claims), the parties entered into the Stipulation, whereby SanDisk dismissed its "remaining" infringement claims and Kingston dismissed its related validity and unenforceability counterclaims. According to SanDisk, the Stipulation's recognition that this court might "reverse remand, or vacate, in whole or in part, the Court's September 22, 2010 Claim Construction Order" and that the parties agreed that the "Stipulation shall not in any way prejudice any parties' [sic] right to appeal this matter in whole or in part, including, but not limited, to an appeal of the Court's September 22, 2010 Claim Construction Order," J.A. 17754-55, evinces SanDisk's "intent to pursue, on appeal, arguments that those claim-construction rulings were legally incorrect," including any arguments related to the withdrawn claims, SanDisk's Reply Br. 2.
We are not persuaded. First, the Stipulation does not change the fact that there is no final judgment with respect to the withdrawn claims for us to review. Without a final judgment as to the infringement or validity of these claims, the court's claim constructions that impact only these withdrawn claims are not properly before us. Second, the parties' agreement that the Stipulation would not affect their right to appeal the entire claim construction order cannot create a right to appeal where one otherwise does not exist. See Bender v. Williamsport Area School Dist., 475 U.S. 534, 541 (1986) ("[E]very federal appellate court has a special obligation to satisfy itself . . . of its own jurisdiction . . . even though the parties are prepared to concede it.") (internal quotation marks and citations omitted). Consequently, we conclude that we lack jurisdiction to resolve SanDisk's claim construction arguments that impact only the withdrawn claims.
Second, Kingston argues that SanDisk waived its right to challenge the district court's construction of "user data portion" and "overhead data portion" in claim 61 of the '842 patent and claim 67 of the '316 patent because (1) the parties never presented these terms to the court for a construction, and (2) SanDisk never disputed the court's construction of these terms during summary judgment. SanDisk, however, maintains that it did not waive these arguments because the district court construed the related terms "user data" and "overhead information" in claims 1 and 10 of the '842 patent, and the parties accepted that this construction also applied to claim 61 of the '842 patent and claim 67 of the '316 patent. According to Sandisk, Kingston confirmed this understanding when it made the following representation to the district court in its memorandum in support of its motion for summary judgment:
Neither SanDisk nor Defendants presented the issue of whether claims 61 and 67 were limited to only one user data portion and one overhead data portion during the claim construction process. But as explained below, both parties understood those claims to have the same scope as claims 1 and 10 of the '842 patent. Indeed, Defendants were quite surprised when SanDisk indicated it would continue to assert claims 61 and 67, despite the Court's clear guidance as to the limited scope of these claims imposed by the claim language.
J.A. 7341 n.4 (emphasis added). Moreover, according to SanDisk, because it had already presented its claim construction positions to the district court during the Markman proceedings, it was not required to continue challenging the court's construction during summary judgment to preserve its arguments for appeal.
We agree with SanDisk. Based on Kingston's own representations to the district court, the parties assumed that the court's constructions for claims 1 and 10 of the '842 patent would also apply to the related terms in claim 61 of the '842 patent and claim 67 of the '316 patent. We, therefore, are not persuaded by Kingston's argument that SanDisk failed to present its claim construction position to the district court. Nor was SanDisk required to repeat its unsuccessful construction arguments to the district court during summary judgment to preserve the issue for appeal. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1358-59 (Fed. Cir. 2008) (finding that party did not waive right to challenge claim construction on appeal when it had advanced the argument during Markman proceedings but did not object to the district court's jury instruction on that claim construction).
Accordingly, because we conclude that we lack jurisdiction over the '808 and '893 patents and claims 1 and 10 of the '842 patent, we limit our review of the district court's claim constructions to (1) the "recording a relative time of programming . . ." limitation in claims 1 and 3 of the '424 patent, and (2) the "at least a user data portion and an overhead portion" limitation in claim 61 of the '842 patent and claim 67 of the '316 patent.
1. "recording a relative time of programming that at least one page of new data and the at least one page of super-ceded data" ('424 patent, claims 1 & 3)
In the conventional flash EEPROM system, an entire block of data is copied to a new block, with the updated data replacing the superceded data. The entire old data block is then erased. This method caused re-writing of the non-updated data with the resulting wear and tear on the flash memory cells.
The '424 patent covers a method for performing "partial block" updates in flash memory devices. When the flash memory system makes minor updates to already stored data, such as by changing a few words in a document, it performs a "partial block" update; in other words, only part of the data block is updated. The controller writes only the pages with the updated data into the new block as opposed to rewriting the entire block of data. The new data shares a logical address with the super-ceded data. The controller reads the data from the blocks, identifying those pages that have been superceded by a more recently ...