Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 33
`Entered: October 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`PROMOS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01413
`Patent 6,069,507
`____________
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2017-01413
`Patent 6,069,507
`
`
`I.
`
`INTRODUCTION
`
`
`A. Background and Summary
`Petitioner1 filed a Petition (Paper 1, “Pet.”) to institute inter partes
`review of claims 10, 11, 13, and 15 of U.S. Patent No. 6,069,507 (Ex. 1001,
`“the ’507 patent”). We instituted trial only as to claims 13 and 15 on the
`sole alleged ground of anticipation by Kim. 2 Pet. 3. Subsequent to the
`Supreme Court’s decision in SAS Institute v. Iancu, 138 S. Ct. 1348 (2018),
`we instituted trial on the remaining claims and grounds presented in the
`Petition. Paper 16. Thus, included for trial are claims 10, 11, 13, and 15 on
`the sole alleged ground of anticipation by Kim.
`Prior to our adding claims 10 and 11 to the trial, Patent Owner3 filed a
`Patent Owner Response (Paper 11, “PO Resp.”) addressing only claims 13
`and 15. 4 Ordinarily, arguments in a Preliminary Response do not carry
`automatically over to the Patent Owner Response. However, after we added
`claims 10 and 11 to the trial, we allowed Patent Owner to rely on its
`Preliminary Response (Paper 6) insofar as it addressed claims 10 and 11, and
`Patent Owner waived the opportunity to supplement its Patent Owner
`Response to address claims 10 and 11. Paper 19. Petitioner filed a Reply
`addressing all challenged claims and grounds. Paper 22 (“Reply”). Patent
`Owner filed a Sur-Reply. Paper 25 (“SR”).
`
`
`1 Samsung Electronics Co., Ltd.
`2 U.S. Patent No. 5,875,219.
`3 ProMOS Technologies, Inc.
`4 Patent Owner also submitted the declaration of Mr. Bill Gervasi in support
`of the Patent Owner Response. Ex. 2002.
`
`2
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`IPR2017-01413
`Patent 6,069,507
`Oral argument was consolidated for IPR2017-01412 and
`IPR2017-01413, and held on June 21, 2018. A transcript of the consolidated
`oral argument has been entered as Paper 32.
`We find that Petitioner has shown by a preponderance of the evidence
`that each of claims 10, 11, 13, and 15 is unpatentable.
`B. Related Matters
`Both Petitioner and Patent Owner have identified the following action
`as involving the ’507 patent: ProMOS Technologies, Inc. v. Samsung
`Electronics Co., Ltd., No. 1:16-cv-00335-SLR (D. Del.). Pet. 1, Paper 5.
`Petitioner filed another petition for inter partes review of the ’507 patent in
`IPR2017-01412. Petitioner further identifies these inter partes review
`proceedings between the parties that involve other patents: IPR2017-00032;
`IPR2017-00033; IPR2017-00035; IPR2017-00036; IPR2017-00037;
`IPR2017-00038; IPR2017-00039; and IPR2017-00040. Pet. 1–2. Patent
`Owner additionally identifies these inter partes review proceedings between
`the parties that involve other patents: IPR2017-01414, IPR2017-01415,
`IPR2017-01416, IPR2017-01417, IPR2017-01418, and IPR2017-01419.
`Paper 5.
` The ’507 Patent
`C.
`The ’507 patent relates to delay-locked loops (DLLs) and to reducing
`delay line length in DLLs. Ex. 1001, 1:7–9. The ’507 patent notes that “[i]n
`order to achieve sufficient coverage of frequency ranges and guarantee
`desired resolution, DLLs generally require long delay lines.” Id. at 1:14–18.
`Figure 1 is reproduced below:
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`IPR2017-01413
`Patent 6,069,507
`
`
`Figure 1 illustrates a diagram of what the ’507 patent regards as typical
`digital DLL according to the prior art. Id. at 2:24.
`
`With respect to the prior art shown in Figure 1, input clock signal
`CLKIN is received at buffer 10 which provides a buffered clock signal CKI
`and which is coupled to phase detector 12, shift register 14, and delay line
`16. Id. at 1:20–23. Delay line 16 is coupled to buffer 18 through which an
`output clock signal, CLKOUT, is produced. Id. at 1:23–25. The CLKOUT
`signal passes through buffer 20 to produce a feedback clock signal, CKF, to
`phase detector 12. Id. at 1:25–27. Phase detector 12 determines whether a
`phase difference exists between the buffered input signal CKI and feedback
`clock signal CKF. Id. at 1:27–29. The phase difference determines an
`appropriate shift in the buffered input clock signal via adjustment of shift
`register 14 to select sufficient delay via delay line 16. Id. at 1:29–32.
`
`The ’507 patent explains that there are several disadvantages with
`prior art type DDLs as clock speeds continue to increase. Id. at 1:34–36. To
`achieve high resolution and coverage of wide frequency ranges, the delay
`cells in delay line 16 and associated register cells in shift register 14 increase
`in number. Id. at 1:37–40. That expansion in length of the delay line leads
`
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`IPR2017-01413
`Patent 6,069,507
`to larger silicon area requirements and higher power consumption, as well as
`longer lock-in time and larger frequency signal distortion. Id. at 1:43–47.
`
`The ’507 patent aims to overcome these disadvantages via the
`following disclosed method:
`[A] method for reducing delay line length in a digital delay
`locked loop (DLL) includes determining a phase difference
`between an input clock signal and a feedback clock signal, and
`maintaining the phase difference between the input clock signal
`and the feedback clock signal within approximately 180◦. The
`method also includes delaying the input clock signal to
`compensate for the phase difference, wherein a number of delay
`cells utilized is reduced by approximately one-half.
`Id. at 2:3–11. In that regard, Figure 2 of the ’507 patent is reproduced below:
`
`
`Figure 2 illustrates a diagram of a DLL according to the ’507 patent. Id. at
`2:25–26. With respect to Figures 1 and 2, the ’507 patent states that like
`components have been similarly numbered in the two figures. Id. at 2:49–
`51. As compared to the DLL of the prior art mentioned in the ’507 patent,
`DLL 24 in Figure 2 of the ’507 patent adds inverter 26, switch 28, and
`second phase detector 30. Id. at 2:55–57. According to the ’507 patent, the
`length of delay line 16' and the corresponding number of cells in shift
`
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`IPR2017-01413
`Patent 6,069,507
`register 14' are reduced as compared to the prior art DLL. Id. at 2:57–60.
`Operation of DLL 24 in Figure 2 is described as follows:
`
`In operation, the second phase detector 30 preferably
`controls the course of the buffered input clock signal CKI by
`controlling the selection of the switch 28. When the second
`phase detector 30 determines that the feedback clock signal CKF
`from the DLL 24 is behind the buffered input clock CKI within
`a 180◦ phase difference, the second phase detector 30 controls the
`switch 28 to be at position (1). The inverter 26 is thus bypassed,
`and the operation of DLL 24 proceeds in a typical manner as
`described with reference to FIG. 1. With the second phase
`detector 30 determining that CKF was within 180◦ behind CKI,
`the delay line 16' is required to compensate for a less than 180◦
`phase difference after the DLL 24 gets locked by the feedback
`through phase detector 12.
`
`When the second phase detector 30 determines that CKF
`is more than 180◦ behind CKI, the second phase detector 30
`controls switch 28 to be at position (2). The inverted buffered
`clock signal is thus selected, so that the input clock signal CKI is
`reversed by 180◦[.] Through the inversion, the phase difference
`needing to be compensated by the delay line 16' is made less than
`180◦ and within the normal operation capabilities of the phase
`adjusting loop formed by phase detector 12, shift register 14', and
`delay line 16'.
`Id. at 2:61 to 3:15. According to the ’507 patent, DLL 24 as described above
`“requires approximately one-half the length that a typical DLL would require
`for comparable clock deskewing needs.” Id. at 3:16–19.
`
`Of all challenged claims, claims 10 and 13 are independent and are
`reproduced below:
`
`10. A method for reducing delay line length in a
`digital delay locked loop (DLL), the method comprising:
`determining a phase difference between an input clock signal
`and a feedback clock signal;
`
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`IPR2017-01413
`Patent 6,069,507
`maintaining the phase difference between the input clock
`signal and the feedback clock signal [within5]
`approximately 180◦, including adjusting the input clock
`signal with a loop comprising a phase detector, shift
`register, and delay line when the determined phase
`difference is less than approximately 180◦; and
`delaying the input clock signal to compensate for the phase
`difference, wherein a number of delay cells utilized is
`reduced by approximately one-half.
`13. A method for reducing delay line length in a digital
`
`delay lock look (DLL), the method comprising:
`determining whether a feedback clock signal in the DLL follows
`within a 180◦ phase difference behind an input clock signal;
`and
`selecting a switch position according to the determining step,
`including selecting a first switch position when the feedback
`clock signal follows behind the input clock signal with[in6]
`180◦.
`
`
`5 Based on an apparent error, the word “within” is missing from the
`maintaining clause as it appears in the published version of claim 10.
`During prosecution, Applicant amended the language of what became
`claim 10 to include, inter alia, the limitation “within approximately 180◦.”
`Ex. 1004, 58, 59. In the Notice of Allowance, the Examiner also
`acknowledged that the maintaining step recites “within approximately 180
`degree[s].” Id. at 65. As indicated in our institution decision, we read claim
`10 as including “within.” Paper 7, 6 n.3. Neither party contested this
`reading in subsequent papers.
`6 The word “with” in the selecting clause evidently reflects a publishing
`error, and so we read it as the different word “within.” During prosecution,
`the language of what became claim 13 recited the following limitation:
`“selecting a switch position according to the determining step,” including
`“selecting a first switch position when the feedback clock signal follows
`behind the input clock signal within 180◦.” Ex. 1004, 27–28, 59 (emphasis
`added). The Examiner also used the word “within” when stating the reasons
`for allowing this claim. Id. at 65. As indicated in our institution decision,
`
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`IPR2017-01413
`Patent 6,069,507
`Ex. 1001, 4:47–59; 4:66–5:7.
`Evidence Relied Upon by Petitioner
`D.
`Petitioner relies on the following references7:
`
`
`
`Kim
`
`Reference
`U.S. Pat. No. 5,875,219
`
`Date
`Feb. 23, 1999,
`Filed January 2, 1997
`
`Exhibit
`Ex. 1009
`
`
`Petitioner also relies on the Declaration of Jacob Baker, Ph.D., P.E.
`(Ex. 1002).
`The Instituted Grounds
`E.
`We instituted trial on the following ground of unpatentability. Paper
`7, 26; Paper 16, 2.
`Claim(s) Challenged
`10, 11, 13, and 15
`
`Basis
`§ 102(e)
`
`Kim
`
`Reference
`
`
`ANALYSIS
`
`A.
`
`II.
`The Law on Anticipation
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). While the elements must be arranged in the same way as is recited in
`the claim, “the reference need not satisfy an ipsissimis verbis test.” In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
`
`we read claim 13 as including “within. Paper 7, 6 n. 4. Neither party
`contested this reading in subsequent papers.
`7 The ’507 patent was filed on May 22, 1998 and does not claim priority to
`any earlier application. Ex. 1001, [22].
`
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`IPR2017-01413
`Patent 6,069,507
`832–33 (Fed. Cir. 1990)). Identity of terminology between the anticipatory
`prior art reference and the claim is not required. “A reference anticipates a
`claim if it discloses the claimed invention ‘such that a skilled artisan could
`take its teachings in combination with his own knowledge of the particular
`art and be in possession of the invention.’” In re Graves, 69 F.3d 1147,
`1152 (Fed. Cir. 1995). Prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Also, “it is proper to take into account not only specific teachings of
`the reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
`(CCPA 1968). As the Court of Appeals for the Federal Circuit recently
`explained, the dispositive question for anticipation is whether one skilled in
`the art would reasonably understand or infer from a prior art reference that
`every claim element is disclosed in that reference. Eli Lilly v. Los Angeles
`Biomedical Research Inst., 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017).
`Level of Ordinary Skill in the Art
`B.
`Petitioner proposes that a person of ordinary skill in the art at the time
`of the alleged invention of the ’507 patent “would have had at least a
`bachelor’s degree in electrical engineering or a similar field, and at least two
`to three years of experience in integrated circuit design. (Ex. 1002, ¶¶ 18–
`19.)” Pet. 4 (footnote omitted). Patent Owner has not expressed what
`constitutes the level of ordinary skill in the art. We find Petitioner’s
`proposal vague insofar as it includes the qualifier “at least” to describe the
`level of education and the amount of working experience. This qualifier
`results in ranges that are too broad to provide a meaningful indication of
`what knowledge and skills would have been possessed by one with ordinary
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`Patent 6,069,507
`skill in the art. We adopt the level of skill in the art proposed by Petitioner,
`as we credit the testimony of Petitioner’s declarant in that regard (Ex. 1002
`¶ 18), but eliminate the qualifier “at least” to eliminate vagueness.
`C. Claim Construction
`The Petition contends that the expiration date of the ’507 patent is
`May 22, 2018. Pet. 10. Patent Owner does not dispute that expiration date.
`PO Resp. 5. Thus, the ’507 patent has expired, and we construe the
`challenged claims according to rules applicable to expired patent claims.
`We review expired patent claims according to the standard applied by
`the district courts. See In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012).
`Specifically, we apply the principles set forth in Phillips v. AWH Corp.,
`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Patent Owner agrees that
`the claim construction principles set forth in Phillips apply. PO Resp. 5. “In
`determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). However, claim
`construction does not mean importing limitations into the claims in the name
`of construction, if the limitations are not otherwise there. As the Federal
`Circuit explained in Phillips,
`
`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.” Innova, 381 F.3d at 1115; see also Vitrionics,
`90 F.3d at 1582 (“we look to the words of the claims themselves
`. . . to define the scope of the patented invention”); Markman, 52
`F.3d at 980 (“The written description part of the specification
`itself does not delimit the right to exclude. That is the function
`and purpose of claims.”). That principle has been recognized
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`Patent 6,069,507
`since at least 1836, when Congress first required that the
`specification include a potion in which the inventor “shall
`particularly specify and point out the part, improvement, or
`combination, which he claims as his own invention or
`discovery.” Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117, 119.
`In the following years, the Supreme Court made clear that the
`claims are “of primary importance, in the effort to ascertain
`precisely what it is that is patented.” Merrill v. Yeomans, 94 U.S.
`568, 570, 24 L.Ed. 235 (1876). Because the patentee is required
`to “define precisely what his invention is,” the Court explained,
`it is “unjust to the public, as well as an evasion of the law, to
`construe it in a manner different from the plain import of its
`terms.” White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed.
`303 (1886); see also Cont’l Paper Bag Co. v. E. Paper Bag Co.,
`210 U.S. 405, 419, 28 S.Ct. 748, 52 L.Ed. 1122 (1908) (“the
`claims measure the invention”); McCarty v. Lehigh Valley R.R.
`Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358 (1895) (“if
`we once begin to include elements not mentioned in the claim, in
`order to limit such claim . . ., we should never know where to
`stop”); Aro Mfg. Co. v. Convertible Top Replacement Co., 365
`U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“the claims
`made in the patent are the sole measure of the grant”).
`Phillips, 415 F.3d at 1312.
`Claim terms generally are given their ordinary and customary
`meaning, as understood by one with ordinary skill in the art when read in the
`context of the specification and prosecution history. Thorner v. Sony
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing
`Phillips, 415 F.3d at 1313). There are two exceptions to that rule: “1) when
`a patentee sets out a definition and acts as his own lexicographer,” and
`“2) when the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner, 669 F.3d at 1365. Disavowal
`can be effectuated by language in the specification or the prosecution
`history. Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed.
`Cir. 2016). “In either case, the standard for disavowal is exacting, requiring
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`Patent 6,069,507
`clear and unequivocal evidence that the claimed invention includes or does
`not include a particular feature.” Id.
`
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). “[T]he claims must ‘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.’” Williamson v.
`Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (internal quotation
`omitted). Neither party contends that the Specification of the ’507 patent
`specially defined any term or that the inventors of the ’507 acted as their
`own lexicographer. We have no reason to determine otherwise.
`If the words of the claim are clear, and absent the exceptions above,
`the claims should be interpreted as written and not rewritten in the name of
`claim construction. SRAM Corp. v. AD-II Engineering Inc., 465 F.3d 1351,
`1359 (Fed. Cir. 2006). In SRAM Corp., the Federal Circuit stated:
`While SRAM strongly urges the court to interpret the claim to
`encompass the innovative precision indexing shifting feature it
`contends it has invented, we are powerless to rewrite the claims
`and must construe the language of the claim at issue based on the
`words used. Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951
`(Fed. Cir. 1993). In this case, the words are clear and the claims
`cover no more than the recited method of taking up lost motion
`and effecting a shift.
`SRAM Corp., 465 F.3d at 1359 (emphasis added); see K-2 Corp. v. Solomon
`S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims;
`instead, we give effect to the terms chosen by the patentee.”).
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`1.
`“maintaining the phase difference between
`the input clock signal and the feedback clock signal
`[within] approximately 180◦”
`Claim 10 includes a step of “maintaining the phase difference between
`
`the input clock signal and the feedback clock signal [within] approximately
`180◦.” Ex. 1001, 4:51–53. In our institution decision, we construed this
`phrase to mean “ensuring that the feedback clock signal follows behind the
`input clock signal by less than approximately 180◦.” Paper 7, 12. We have
`reconsidered our initial construction in light of the entire trial record.
`The “maintaining . . . [within] approximately 180◦” recitation does not
`specify whether the input clock signal must be ahead of the feedback clock
`signal or the feedback clock signal must be ahead of the input clock signal.
`Without that restrictive recitation, either signal can be ahead of the other by
`within approximately 180◦, and either signal can lag the other by within
`approximately 180◦. That is how Petitioner has treated the limitation, i.e.,
`that the within approximately 180◦ separation can be in either direction.
`Pet. 18–23, Reply 16.
`
`That position is significant in this case, because there exist two
`different ways of looking at a phase lead or a phase lag. Petitioner’s
`declarant, Dr. Baker, explains,
`A person of ordinary skill in the art would have understood that
`for two clock signals having the same frequency, and hence the
`same period, the phase difference between the two signals is
`always within approximately 180◦. For example, if the
`feedback clock signal is lagging the input clock signal by 210◦,
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`Patent 6,069,507
`that is the same as the feedback clock signal leading the input
`clock signal by 150◦.
`Ex. 1002 ¶ 62. From that perspective, for signals that have the same
`frequency and period, a particular phase lag is the same as a phase
`lead of an amount that is the 360◦ complement (difference from 360◦)
`of the phase lag. Petitioner contends the limitation at issue is always
`satisfied by two clock signals having the same frequency and period
`in a system, because the 180◦ difference required by the limitation can
`be in either direction. Pet. 18–19 (citing Ex. 1002 ¶ 62).
`Patent Owner does not dispute Petitioner’s assertion that if the 180◦
`
`difference required by the limitation can be in either direction, then the
`limitation always is satisfied by an input clock signal and a feedback clock
`signal that have the same frequency and period. Patent Owner, however,
`argues that a reading of the limitation covering a variation in either direction
`is inconsistent with the intrinsic record, i.e., the Specification and the
`prosecution history, and would, in effect, read the limitation out of the claim
`and render it meaningless. Prelim. Resp. 6. In essence, Patent Owner notes
`that a feedback clock signal is always either within 180◦ behind the input
`clock signal or within 180◦ ahead of the input clock signal, without
`exception. According to the Patent Owner, the limitation “maintaining the
`phase difference between the input clock signal and the feedback clock
`signal [within] approximately 180◦” should be construed as meaning
`“ensuring that the feedback clock signal follows behind the input clock
`signal by less than 180◦.” Id. at 8 (emphasis added).
`
`In the Decision on Institution, we determined that the above-noted
`arguments of Patent Owner were persuasive. Paper 7, 11. However, initial
`claim construction made at the time of institution of trial is not conclusive
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`and does not carry over necessarily to a Final Written Decision. Here, we
`must reassess the issue on the basis of the complete record developed during
`trial and also on a fresh review of the applicable binding case authority
`governing the law on claim interpretation. Based on the complete trial
`record, Patent Owner’s arguments are not persuasive.
`Subsequent to institution of trial, Petitioner submitted a Reply. Paper
`22. It identifies and addresses numerous factors, all discussed below, that
`weigh in favor of Petitioner’s claim construction, including (1) that we must
`respect the language of the claims in the absence of clear disavowal, Reply
`15; (2) that the record does not support Patent Owner’s contention that under
`Petitioner’s broader construction, the limitation at issue is superfluous or
`meaningless, Reply 17–18; (3) that the prosecution history does not support
`an express disavowal by the patent applicant during pre-issuance
`examination, Reply 23–24; and (4) that the Specification of the ’507 patent
`demonstrates the patent drafter knew how to describe the relationship
`between two clock signals in a manner that makes clear which clock signal
`leads or lags the other in phase, via express recitations with the words
`“behind” or “follows.” Reply 19.
`Patent Owner relies on general principles that urge in favor of “giving
`effect to all terms in the claim” and avoid rendering claim language
`“functionally meaningless.” Prelim. Resp. 6. Those principles do not
`override the bedrock principle of patent law, explained in Phillips, that it is a
`claim that defines the covered invention and that it is “unjust to the public,
`as well as an evasion of the law, to construe it in a manner different from the
`plain import of its terms.” Phillips, 415 F.3d at 1312; see McCarty,
`160 U.S. at 116 (“if we once begin to include elements not mentioned in the
`claim, in order to limit such claim . . ., we should never know where to
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`stop.”). We must not, if the words of the claim are clear and if there is no
`disavowal, rewrite a claim in the name of claim construction. SRAM Corp.,
`465 F.3d at 1359; see also K-2 Corp., 191 F.3d at 1364. This is such a case.
`We must not rewrite the claims.
`
`The words of the claim are clear in not specifying which signal leads
`or lags, and there is no express disavowal by Patent Owner, either in the
`Specification or in the prosecution history, as will be explained below. We
`must not rewrite the claim to add the requirement proposed by Patent
`Owner.
`The Specification of the ’507 patent describes,
`When the second phase detector 30 determines that CKF
`[feedback clock signal] is more than 180◦ behind CKI [input
`clock signal], the second phase detector 30 controls switch 28 to
`be at position (2). The inverted buffered clock signal is thus
`selected, so that the input clock signal CKI is reversed by 180◦[.]
`Through the inversion, the phase difference needing to be
`compensated by the delay line 16' is made less than 180◦ and
`within the normal operation capabilities of the phase adjusting
`loop formed by phase detector 12, shift register 14', and delay
`line 16'.
`Ex. 1001, 3:7–15. 8 The above-quoted description constitutes an affirmative
`disclosure of one embodiment, and not a disavowal of anything that is
`
`
`8 According to Petitioner, even this disclosed embodiment of the ’507 patent
`does not ensure that the feedback clock signal follows behind the input clock
`signal by less than 180◦, because in some instances, the switch continuously
`toggles between position (1) and position (2). Reply 19–23. We do not
`reach that issue because Petitioner would still prevail even if the sole
`embodiment disclosed in the Specification of the ’507 patent ensures that the
`feedback clock signal follows behind the input clock signal by less than
`180◦.
`
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`Patent 6,069,507
`different. Elsewhere in the Specification, there also is no clear language of
`disavowal.
`
`Also, as noted by Petitioner (Reply 19–20), the Specification of the
`’507 patent demonstrates that Patent Owner knows how to describe the
`relationship between two clock signals in a manner that makes clear which
`clock signal leads or lags the other in phase, by using the word “behind” to
`indicate which signal lags the other. Ex. 1001, 2:63–66; 3:3–4; 3:8–9.
`Similarly, claim 13 recites “determining whether a feedback clock signal in
`the DLL follows within a 180◦ phase difference behind an input clock
`signal.” Id. at 5:1–3 (emphasis added). By not rewriting the claim, we give
`effect to the words chosen by Patent Owner in drafting the claims. If they
`are so broad as to be functionally meaningless, they still are what the claim
`drafter has recited and Patent Owner could have sought correction during the
`pendency of the patent, e.g., seeking to reissue the patent claim.
`
`With regard to the prosecution history, it is anything but clear even as
`presented by Patent Owner. Patent Owner’s articulation is this:
`[T]he prosecution history makes clear that this limitation must be
`given meaning, and that it was important to the issuance of the
`patent over the art of record. During prosecution, claims that
`lacked this limitation were rejected as obvious over Butcher
`which, among other things, disclosed a system that included two
`clocks having the same frequency (and thus the same period).
`Ex. 1004 (’507 file history) at 45; Ex. 2001 (Butcher) at col. 4:9–
`16. Claim 11, which issued as claim 10, included the language
`being construed here, and was identified as allowable over the
`art of record. Ex. 1004 (’507 file history) at 65. Once the claim
`was amended to include the limitation “maintaining the phase
`difference between an input clock signal and a feedback clock
`signal [within] approximately 180 degree” it was allowed, and
`the Notice of Allowance stated: “As to claims 9, 11, and 15
`[which issued as claims 8, 10 and 13], none of the prior art
`teaches the limitation “maintaining the phase difference between
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`Patent 6,069,507
`an input clock signal and a feedback clock signal within
`approximately 180 degree.” Id.
`Prelim. Resp. 7–8.
`
`The above description by Patent Owner is internally inconsistent and
`self-contradictory. First, Patent Owner asserts that application claim 11,
`which issued as patent claim 10, already “included the language being
`construed here, and was identified as being allowable over the art of record.”
`Id. at 7. Then, Patent Owner states “Once [application claim 11] was
`amended to include the limitation ‘maintaining the phase difference between
`an input clock signal and a feedback clock signal [within] approximately 180
`degree’ it was allowed.” Id. at 7–8. Patent Owner’s suggestion that
`application claim 11 was amended to overcome a prior art rejection cannot
`be correct if it was allowable prior to the amendment. Instead, Petitioner’s
`accounting of the prosecution history, partially reproduced below, is more
`accurate:
`Pending claim 11 already included the “maintaining” feature
`based on its dependency on claim 8 and had already been deemed
`to be allowable—while pending claim 8 was not. (Ex. 1004 at
`26–27, 46.) Patentee never added the “maintaining” feature to
`claim 11. Instead, in responding to the Office Action, patentee
`simply rewrote claims 9 and 11 in
`independent form,
`incorporating the features of claim 8 from which they depended.
`(Id. at 58–59.)
`Reply 24. 9 Also, as indicated by Petitioner, application claim 11 included
`additional limitations not present in claim 8 from which it depends. Id. at
`23.
`
`
`9 In its Sur-Reply, Patent Owner asserts that the Examiner’s Office Action
`stated that the Butcher reference discloses a method comprising all steps of
`claims 8–11 and 14 except for the step of “maintaining the phase difference
`between the input clock signal and the feedback clock signal within 180
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`
`Finally, Patent Owner points to this statement in the Examiner’s
`Notice of Allowance: “As to claims 9, 11 and 15 [which issued as claims 8,
`10 and 13], none of the prior art teaches the limitation ‘maintaining the
`phase difference b