United States District Court, D. Delaware
ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC., Plaintiff,
TOSHIBA CORPORATION, et al. Defendants.
Richard D. Kirk, Esq., Stephen B. Brauerman, Esq., Vanessa R. Tiradentes, Esq., Bayard, P.A., Wilmington, DE, Counsel for Plaintiff, St. Clair Intellectual Property Consultants, Inc.
Raymond P. Niro, Esq., Christopher J. Lee, Esq., Richard B. Megley, Esq., Frederick C. Laney, Esq., Niro, Haller & Niro, Chicago, IL, Of Counsel.
Richard L. Horwitz, Esq., David E. Moore, Esq., Potter Anderson & Corroon LLP, Wilmington, DE, Counsel for Defendants Toshiba Corporation, Toshiba America Incormation Systems, Inc., and Toshiba America, Inc.
Jeffrey K. Sherwood, Esq., Leslie L. Jacobs, Jr., Esq., Daniel G. Cardy, Esq., Dickstein Shapiro LLP, Washington, DC, of Counsel.
KENT A. JORDAN, Circuit Judge.
This claim-construction opinion addresses the remnants of a patent infringement action brought by Plaintiff, St. Clair Intellectual Property Consultants, Inc. ("St. Clair"), against multiple Defendants, including Toshiba Corporation, Toshiba America Information Systems, Inc., and Toshiba America, Inc. (collectively, "Toshiba"). The original action involved seven patents, only two of which remain at issue: U.S. Patent No. 5, 613, 130 (the "'130 patent") and U.S. Patent No. 5, 630, 163 (the "'163 patent"). Chief Judge Leonard P. Stark previously construed one claim term from the '130 patent and three claim terms from the '163 patent in this case, but did not construe any of the claim terms currently at issue. With respect to the only claim term in dispute from the '163 patent, however, Chief Judge Stark did construe it in related litigation, St. Clair Intellectual Property Consultants, Inc. v. Apple, Inc., et al., No. 10-982-LPS, 2012 WL 3238252 (D. Del. Aug. 7, 2012).
II. LEGAL STANDARDS
The general rules of claim construction are well-established, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and need not be repeated. The claims at issue here, however, involve means-plus-function limitations, which are limitations "expressed as a means... for performing a specified function without the recital of structure, material, or acts in support thereof." 35 U.S.C. § 112, ¶ 6 (referred to as subsection (f) post-AIA). The use of the word "means" in a claim limitation creates a rebuttable presumption that section 112, paragraph six has been invoked. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). That presumption can be overcome where the claim limitation itself recites sufficient structure to perform the claimed function in its entirety. TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., 375 F.3d 1126, 1135 (Fed. Cir. 2004).
Once it is determined that a claim term is governed by section 112, paragraph 6, construing a means-plus-function limitation requires the Court to (1) identify the claimed function, and (2) identify the corresponding structure in the written description that performs the identified function. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318-19 (Fed. Cir. 2003). A corresponding structure must be "link[ed] or associate[d] with the function recited in the claim, " B. Braun Medical, Inc. v. Abbott Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997), but section 112, paragraph 6 does not "permit incorporation of structure from the written description beyond that necessary to perform the claimed function, " Micro Chemical Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
III. THE '130 PATENT
The '130 patent describes a computer system that can select and control the voltage delivered to pluggable cards, such as PCMCIA cards. ('130 patent at 1:6-8.) The invention of the '130 patent is a system to determine and select the proper voltage to apply to a pluggable card so as to avoid providing the incorrect voltage and thereby risk damaging the card. ( Id. at 1:55-66, 2:15-31.) The parties dispute the construction of eight terms in the asserted claims of the '130 patent.
A. "power control means for controlling said power switching means to select one of said supply voltages"
St. Clair contends that the term "power control means" does not require construction and should be given its plain and ordinary meaning. (D.I. 932 at 4.) If, however, I determine that the disputed term is a means-plus-function limitation, then the parties agree that the function is "controlling the power switching means to select one of said supply voltages." As to the corresponding structure, St. Clair argues that it is "a voltage select register; a decode logic; a power control register; and a card detect logic with an asynchronous load logic." (D.I. 932 at 4.) Toshiba, conversely, contends that the corresponding structure is "PCMCIA ...