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Microchip Technology Inc. v. Aptiv Services U.S. LLC

United States District Court, D. Delaware

June 17, 2019

MICROCHIP TECHNOLOGY INCORPORATED, Plaintiff,
v.
APTIV SERVICES US, LLC Defendant.

          John 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 Plaintiffs.

          Philip 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.

          MEMORANDUM OPINION

          STARK, U.S. DISTRICT JUDGE:

         Plaintiff 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 apparatuses.

         Presently 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")

         I. LEGAL STANDARDS

         The 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.

         "[T]he 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).

         While "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).

         It is 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).

         It is 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).

         In 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.

         "In 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).

         Finally, "[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)).

         I. CONSTRUCTION OF DISPUTED TERMS [1]

         A. The '191 Patent 1."Coupled" and "Coupling"[2]

Plaintiff

directly or indirectly connected

Defendant

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 coupled

Court

directly or indirectly connected

         The 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 the claims.").

         While 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.

         2."peripheral devices" and "peripheral USB devices"[3]

Plaintiff[4]

no construction needed, but if needed: devices that communicate with a host computer over USB

Defendant

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

Court

devices that communicate with a host computer over USB

         Defendant 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)

         The '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).

         3."maintain connectivity"[5]

Plaintiff

No construction needed, but if needed: maintain a connection

Defendant

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

Court

maintain an electrical connection

         Defendant 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)

         The 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 ...


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