United States District Court, D. Delaware
W. Shaw, Jeffrey T. Castellano, Andrew E. Russell, SHAW
KELLER LLP, Wilmington, DE Bruce W. Slay den II, Brian C.
Banner, R. William Beard, Jr., Truman H. Fenton, Darryl J.
Adams, SLAYDEN GRUBERT BEARD PLLC, Austin, TX Attorneys for
A. Rovner, Jonathan A. Choa, POTTER ANDERSON & CORROON,
LLP, Wilmington, DE Elizabeth R. Brannen, Kenneth J. Halpern,
Steven Stiglitz, STRIS & MAHER LLP, Los Angeles, CA
Attorneys for Defendant.
U.S. DISTRICT JUDGE:
Microchip Technology, Inc. ("Plaintiff) filed suit
against Defendant Aptiv Services US, LLC
("Defendant") on August 24, 2017, alleging
infringement of U.S. Patent Nos. 7, 478, 191 (the
'"191 Patent"), 7, 523, 243 (the "'243
Patent"), and 7, 627, 708 (the "'708
Patent"). (D.I. 1) The patents-in-suit relate to
switching technologies for USB periphery and host
before the Court is the issue of claim construction. The
parties completed briefing on January 28, 2019. (D.I. 96) The
Court held a claim construction hearing on February 25, 2019.
(D.I. 102) ("Tr")
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). "It is a bedrock principle of patent law that
the claims of a patent define the invention to which the
patentee is entitled the right to exclude." Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(citation and internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting
claim construction." Id. at 1324. Instead, the
court is free to attach the appropriate weight to appropriate
sources "in light of the statutes and policies that
inform patent law." Id.
words of a claim are generally given their ordinary and
customary meaning. ... [which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation
marks omitted). "[T]he ordinary meaning of a claim term
is its meaning to the ordinary artisan after reading the
entire patent." Id. at 1321 (internal quotation
marks omitted). The patent "specification is always
highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning
of a disputed term." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
"the claims themselves provide substantial guidance as
to the meaning of particular claim terms," the context
of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore,
"[o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of
enlightenment.... [b]ecause claim terms are normally used
consistently throughout the patent." Id.
(internal citation omitted).
likewise true that "[differences among claims can also
be a useful guide .... For example, the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim." Id. at
1314-15 (internal citation omitted). This "presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that "the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs."
Phillips, 415 F.3d at 1316. It bears emphasis that
"[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words or expressions
of manifest exclusion or restriction." Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed.
Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (alteration in
original) (internal quotation marks omitted).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings
before the [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent."
Phillips, 415 F.3d at 1317. "[T]he prosecution
history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be." Id.
some cases, ... the district court will need to look beyond
the patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period." Teva, 135 S.Ct. at
841. "Extrinsic evidence consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises." Markman, 52 F.3d at 980. For
instance, technical dictionaries can assist the court in
determining the meaning of a term to those of skill in the
relevant art because such dictionaries "endeavor to
collect the accepted meanings of terms used in various fields
of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to
ensure that the court's understanding of the technical
aspects of the patent is consistent with that of a person of
skill in the art, or to establish that a particular term in
the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must
not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose
of litigation and thus can suffer from bias that is not
present in intrinsic evidence." Id. Overall,
while extrinsic evidence "may be useful to the
court," it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result
in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence."
Id. at 1318-19. Where the intrinsic record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
"[t]he construction that stays true to the claim
language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct
construction." Renishaw PLC v. Marposs
Societa'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998). It follows that "a claim interpretation that
would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. Int'l Trade
Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'l Trade
Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
CONSTRUCTION OF DISPUTED TERMS 
The '191 Patent 1."Coupled"
directly or indirectly connected
directly or indirectly connected, and capable of
supporting a USB connection (i.e. one in which the
host can enumerate and engage in USB communication
with a device) when a USB host and device are
directly or indirectly connected
term "coupled" is expressly defined in the
specification as "directly or indirectly
connected." '191 Patent, col. 4 11. 27-28.
Generally, patentees are bound by their express definitions.
See Sinorgchem Co., Shandong v. Intl. Trade Commn.,
511 F.3d 1132, 1136 (Fed. Cir. 2007) ("[T]he patentee
must be bound by the express definition.");
Vitronics, 90 F.3d at 1582 ("The specification
acts as a dictionary when it expressly defines terms used in
Plaintiffs construction is identical to the specification
definition, Defendant proposes that definition with the
addition of the limitation that "coupled" or
"coupling" also requires "supporting a USB
connection," based on Defendant's contention that
the entire patent concerns USB connections. (D.I. 96 at 8)
However, as Defendant acknowledges (see Id. at
10-11), the terms are used in the patent to relate to
connections in addition to USB connections. See also
'191 Patent, cl. 9 (claiming "a memory element
coupled to the USB hub," which need not be "USB
connection"); col. 7 11. 56-60 (discussing "[USB]
Host controller, coupled to south bridge 113," which
need not be "USB connection"). Defendant's
construction, therefore, is too narrow.
devices" and "peripheral USB
no construction needed, but if needed: devices that
communicate with a host computer over USB
entities that: (i) perform at least one function;
(ii) have a USB device controller; (iii) have a USB
device class and device, configuration, and interface
descriptors; and (iv) are assigned a unique address
when enumerated by a USB host while attached to that
bus capable of being attached/detached by end users
devices that communicate with a host computer over
argues that "peripheral (USB) devices" is a
technical term that will be unclear to lay jurors, and the
Court should read into these terms portions of the USB
specification, because '"every USB device must be in
full compliance with the USB specification."' (D.I.
96 at 16) (quoting patent examiner in Office Action)
'191 Patent provides sufficient guidance as to the
meaning of these terms, without resorting to the USB
specification. The '191 Patent includes several examples
of peripheral devices: "USB printers, scanners, digital
cameras, storage devices, card readers, etc." that
"may communicate with a host computer system over
USB." '191 Patent, col. 111. 27-29. These teachings,
in combination with the evidence (including expert testimony)
that will be provided at trial, and the Court's adoption
of Plaintiff s proposed construction, will allow jurors to
understand how these terms would be understood by a person of
ordinary skill in the art ("POSA"). In particular,
jurors will understand how a POSA would distinguish between
"peripheral devices" and "host devices."
While the Court is not persuaded that it must read
requirements from the USB specification into the claim,
devices must substantially comply with some USB standard in
order to "communicate with a host computer over
USB," as Plaintiff acknowledges (Tr. at 17).
No construction needed, but if needed: maintain a
retain the ability of the first host and at least one
of the originally connected peripheral devices to
engage in USB communications without requiring
re-enumeration or reset of that peripheral device
maintain an electrical connection
argues the USB hub must maintain a communication connection
between the host and peripheral devices without any reset or
re-enumeration. (Id. at 24) Defendant also argues
that Plaintiffs proposal would encompass maintaining a mere
physical connection, which was disclaimed as part of the
prior art. (Id. at 25)
Court is not persuaded that "maintain connectivity"
precludes reset or re-enumeration. The '191 Patent
primarily concerns automatic switching, which the
specification describes as a process where "the user is
not required to manually press buttons, change cables, etc.
to initiate the switching, but rather merely connects second
host device to USB hub device." '191 Patent, col. 5
11. 12-15 (internal reference numbers omitted). The
specification also states that "[b]y enumerating USB
switching hub ... the downstream devices may
not have to re-enumerate USB switching hub ...
each time a downstream device is switched." Id.
at col. 7 11. 6-11 ...