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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`
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`QUALCOMM INCORPORATED,
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`Plaintiff,
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` Case No.: 17cv1375 DMS(MDD)
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`ORDER CONSTRUING CLAIMS
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`v.
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`APPLE INCORPORATED,
`
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`APPLE INCORPORATED,
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`Defendant.
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`
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`Counter Claimant,
`
`v.
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`QUALCOMM INCORPORATED,
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`Counter Defendant.
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`This matter came before the Court for a claim construction hearing on September 5,
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`2018. Juanita Brooks, Katie Prescott, Christopher Green and Frank Albert appeared on
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`behalf of Apple, and William Devitt, Keith Davis and John Michalik appeared on behalf
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`of Qualcomm. After a thorough review of the parties’ claim construction briefs and all
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`other material submitted in connection with the hearing, the Court issues the following
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`order construing the disputed terms of the patents at issue here.
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 1
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14931 Page 2 of 10
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`I.
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`BACKGROUND
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`There are eight Apple patents at issue in this case: United States Patents Numbers
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`7,355,905 (“the ‘905 Patent”), 7,760,559 (“the ‘559 Patent”), 8,098,534 (“the ‘534
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`Patent”), 8,443,216 (“the ‘216 Patent”), 8,271,812 (“the ‘812 Patent”), 8,656,196 (“the
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`‘196 Patent”), 7,383,453 (“the ‘453 Patent”) and 8,433,940 (“the ‘940 Patent”). In these
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`eight patents, the parties dispute twelve terms. Those terms are: From the ‘905, ‘559 and
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`‘534 Patents, (1) “integrated circuit,” (2) “received on a first/second input to the integrated
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`circuit”/ “receiving power from at least one first/second input to the integrated circuit” and
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`(3) “during use.” From the ‘453 Patent, (4) “core,” (5) “area,” and (6) “wherein in a normal
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`operation mode:...the core voltage is a first value that is sufficient to maintain the state
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`information of the instruction-processing circuitry.” From the ‘940 Patent, (7) “power
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`area” and (8) “real-time clock.” From the ‘812, ‘216 and ‘196 Patents, (9) “performance
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`domain,” (10) “power management unit” and (11) “establish a ... performance state.”1
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`II.
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`DISCUSSION
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`Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 517
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`U.S. 370, 372 (1996), and it begins “with the words of the claim.” Nystrom v. TREX Co.,
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`Inc., 424 F.3d 1136, 1142 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic, Inc.,
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`90 F.3d 1576, 1582 (Fed. Cir. 1996)). Generally, those words are “given their ordinary
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`and customary meaning.” Id. (citing Vitronics, 90 F.3d at 1582). This “‘is the meaning
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`that the term would have to a person of ordinary skill in the art in question at the time of
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`the invention.’” Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)).
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`1 Prior to the hearing, the parties also disputed another term from the ‘812, ‘216 and ‘196
`Patents: “a prior performance state at which the processor was operating prior to entering
`the sleep state.” At the hearing, Qualcomm agreed to Apple’s proposed construction of
`this term. Therefore, the Court does not address that term in this Order.
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`2
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 2
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14932 Page 3 of 10
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`“The person of ordinary skill in the art views the claim term in the light of the entire
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`intrinsic record.” Id. Accordingly, the Court must read the claims “‘in view of the
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`specification, of which they are a part.’” Id. (quoting Markman v. Westview Instruments,
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`Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). In addition, “‘the prosecution history can often
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`inform the meaning of the claim language by demonstrating how the inventor understood
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`the invention and whether the inventor limited the invention in the course of prosecution,
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`making the claim scope narrower than it would otherwise be.’” Id. (quoting Phillips, 415
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`F.3d at 1318).
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`A.
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`The ‘905, ‘559 and ‘534 Patents
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`The first three patents at issue are the ‘905, ‘559 and ‘534 Patents, which share a
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`common specification. As stated above, there are three terms at issue in these Patents: (1)
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`“integrated circuit,” (2) “received on a first/second input to the integrated circuit”/
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`“receiving power from at least one first/second input to the integrated circuit” and (3)
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`“during use.”
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`1.
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`“Integrated circuit”
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`This term appears in claim 1 of the ‘905 Patent, claims 1, 2 and 3 of the ‘559 Patent,
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`and claims 1, 3 and 4 of the ‘534 Patent. Apple proposes this term be construed as “one or
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`more circuit elements that are integrated onto a single semiconductor substrate.”
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`Qualcomm proposes the term be construed as “a chip made up of connected circuit
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`elements.”
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`The Court adopts Apple’s proposed construction because it is more consistent with
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`the plain language of the term (“integrated”), and the specification. (See ‘905 Patent at
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`2:61-63) (“The integrated circuit 10 may generally comprise the logic circuits 12 and the
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`memory circuits 14 integrated onto a single semiconductor substrate (or chip).”)2 In
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`2 The Court has also reviewed the prosecution history cited by Qualcomm in support of its
`proposed construction. (See Decl. of Kelly V. O’Donnell in Supp. of Qualcomm’s Opening
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`3
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 3
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`

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`contrast, Qualcomm’s proposed construction substitutes the concept of “integrated” with
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`“connected,” and describes the “integrated circuit” as the chip itself rather than multiple
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`circuit elements integrated onto a chip. For these reasons, the Court adopts Apple’s
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`proposed construction of “integrated circuit.”
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`2.
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`“Received on a first/second input to the integrated circuit”/”Receiving power
`from at least one first/second input to the integrated circuit”
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`These terms appear in claim 1 of the ‘905 Patent and claim 1 of the ‘559 Patent.
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`Apple urges the Court to construe the first term as “provided to the integrated circuit on a
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`first/second input,” and the second term as “provided power from at least one first/second
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`input to the integrated circuit.” Qualcomm requests the Court construe the first term as
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`“generated external to the integrated circuit and connected to the integrated circuit on a
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`first/second input,” and the second term as “supplied by a first/second supply voltage
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`generated external to the integrated circuit and connected to the integrated circuit on at
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`least one first/second input.”
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`The Court has reviewed the parties’ arguments on these terms, as well as the intrinsic
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`evidence cited by the parties, and declines to adopt either party’s proposed construction.
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`Apple’s proposed constructions simply substitute “provided” for “received,” and otherwise
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`just rearrange the terms. Qualcomm’s proposed constructions substitute “supplied” for
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`“received,” and add a new concept, namely that the supply voltage be “generated external
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`to the integrated circuit,” which is the parties’ main point of disagreement. Qualcomm
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`relies on the prosecution history to support the inclusion of this concept in its proposed
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`construction, but the prosecution history does not provide that support. Nevertheless, that
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`concept is inherent in the use of the word “input,” and is thus unnecessary. Therefore, the
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`Court declines to adopt either party’s proposed constructions of these terms, and instead
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`Claim Construction Br., Ex. S.) That evidence, however, does not support Qualcomm’s
`proposal.
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`4
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 4
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14934 Page 5 of 10
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`construes these terms according to their plain and ordinary meaning and consistent with
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`the discussion above.
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`3.
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`“During use”
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`The final disputed term from these Patents is “during use.” This term appears in
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`claim 1 of the ‘905 Patent, claim 1 of the ‘534 Patent and claims 1 and 2 of the ‘559 Patent.
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`Apple urges the Court to construe this term according to its plain and ordinary meaning, or
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`as “while operating.” Qualcomm argues the term is indefinite.
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`To satisfy its burden on indefiniteness, Qualcomm must “demonstrate by clear and
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`convincing evidence that one of ordinary skill in the relevant art could not discern the
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`boundaries of the claim based on the claim language, the specification, the prosecution
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`history, and the knowledge in the relevant art.” Haemonetics Corp. v. Baxter Healthcare
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`Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) (citing Halliburton Energy Servs., Inc. v. M-I
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`LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008)). That burden is not met here, and thus the
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`Court rejects Qualcomm’s argument that the term “during use” is indefinite. Rather, the
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`Court finds this term should be construed in accordance with Apple’s proposal, namely
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`that the plain and ordinary meaning applies.
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`B.
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`The ‘453 Patent
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`Turning to the ‘453 Patent, there are three terms at issue: (1) “core,” (2) “area,” and
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`(3) “wherein in a normal operation mode: ...the core voltage is a first value that is sufficient
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`to maintain the state information of the instruction-processing circuitry.” Each of these
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`terms appears in claims 1, 2 and 4 of the ‘453 Patent.
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`1.
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`“Core”/”Area”
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`The parties discuss the first two terms, “core” and “area,” together. Apple asserts
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`“core” should be construed according to its plain and ordinary meaning, or as “a logical or
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`physical instruction processing mechanism.” As for “area,” Apple proposes it be construed
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`as “a portion of the processor excluding a core.” Qualcomm contends each of these terms
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`is indefinite.
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`/ / /
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`5
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 5
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14935 Page 6 of 10
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`As with the term “during use,” Qualcomm has not shown that either of these terms
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`is indefinite. Indeed, Qualcomm concedes both terms can be construed according to their
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`functions or by their respective power supply. Therefore, the Court rejects Qualcomm’s
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`indefiniteness argument. Instead, the Court adopts the plain and ordinary meaning of
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`“core,” and Apple’s proposed construction of the term “area.”
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`2.
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`“Wherein in a normal operation mode … the core voltage is a first value that
`is sufficient to maintain the state information of the instruction-processing
`circuitry”
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`The only other disputed term in the ‘453 Patent is “sufficient to maintain the state
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`information of the instruction-processing circuitry.”3 Apple argues this term should be
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`construed as “at least a value that maintains the state information of the instruction-
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`processing circuitry.” Qualcomm proposes the term be construed as “a minimum value
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`that maintains state information of the instruction-processing circuitry, which minimum
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`value is not sufficient to allow instruction processing to continue.”
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`The Court has reviewed the intrinsic evidence cited by the parties in support of their
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`respective proposed constructions of this term, including the prosecution history, and finds
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`Apple’s proposed construction is more accurate. As Apple points out, the phrase
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`“sufficient to” allows for a range of values, not just one minimum value, as proposed by
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`Qualcomm. Furthermore, Qualcomm’s proposed construction reads the term out of
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`context. Specifically, claim 1 states that in normal operation mode “the core is active,”
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`which means the core is processing instructions. Qualcomm’s proposed construction does
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`not allow for this possibility, and thus it cannot be correct. Accordingly, the Court adopts
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`Apple’s proposed construction of this term.
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`3 Apple asserts the term in dispute includes more than just this language. However, the
`Court disagrees. The actual dispute here concerns only the language set out above.
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`6
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 6
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14936 Page 7 of 10
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`C.
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`The ‘940 Patent
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`The next two terms at issue appear in claims 9 and 11 of the ‘940 Patent. The terms
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`are “power area” and “real-time clock.”
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`1.
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`“Power area”
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`For the first term, “power area,” Apple proposes that it be construed according to its
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`plain and ordinary meaning, or as “grouping related to receiving power.” Qualcomm
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`proposes the term be construed as “arrangement of elements connected to the same power
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`supply.”
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`Although the parties’ propose different constructions of this term, their constructions
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`appear to share the same concept, namely, that a “power area” receives power from one
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`source. Qualcomm’s proposed construction introduces the notion of a power “supply,”
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`which Apple takes issue with, but ultimately the parties agree that the source of power for
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`each “power area” has to be the same. With this understanding, the Court construes this
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`term according to its plain and ordinary meaning.
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`2.
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`“Real-time clock”
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`The next disputed term is “real-time clock.” Apple proposes this term be construed
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`according to its plain and ordinary meaning, or as “provider of time-of-day services.”
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`Qualcomm proposes the term be construed as “circuit that provides time-of-day services
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`to the processor.”
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`Here, the Court agrees with Apple that Qualcomm is attempting to limit the “real-
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`time clock” to a “circuit,” and that this limitation is not provided for in the specification.
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`Indeed, the specification differentiates between the “real-time clock” and the “clock
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`distribution circuitry.” (See ‘940 Patent at 3:46-47.) Thus, although it appears the “real-
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`time clock” may have a circuit component, it is not itself a “circuit,” as Qualcomm
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`proposes. Accordingly, the Court construes this term according to its plain and ordinary
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`meaning, consistent with the above discussion.
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`7
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 7
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14937 Page 8 of 10
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`D.
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`The ‘812, ‘216 and ‘196 Patents
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`The final three disputed terms appear in the ‘812, ‘216 and ‘196 Patents. Those
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`terms are “performance domain,” “power management unit,” and “establish a …
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`performance state.”
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`1.
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`“Performance domain”
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`This term appears in claim 8 of the ‘812 Patent, claim 1 of the ‘216 Patent and claims
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`1, 2 and 3 of the ‘196 Patent. Apple proposes this term be construed as “one or more
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`components that may be controlled as a unit or independently for performance
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`configuration purposes.” Qualcomm proposes the term be construed as “one or more
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`components that may be controlled by the power management unit as a unit for
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`performance configuration purposes.”
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`The specification clearly allows for control of the components within a
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`“performance domain” by either the power management unit (“PMU”) or software, (see
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`‘812 Patent at 2:16-19), and thus Qualcomm’s limitation of power control by a PMU only
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`cannot be correct. The specification also allows for control of components within a
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`performance domain as a unit or independently, (see id. at 4:22-25, 5:20-28), and thus
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`Qualcomm’s limitation of control of the performance domain as a unit only also cannot be
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`correct. Accordingly, the Court adopts Apple’s proposed construction of this term.
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`2.
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`“Power management unit”
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`This term appears in claim 8 of the ‘812 Patent, claims 1 and 2 of the ‘216 Patent
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`and claim 1 of the ‘196 Patent. Apple proposes this term be construed according to its
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`plain and ordinary meaning, or as “hardware and/or a combination of hardware and
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`software that causes a performance domain to transition to a performance state.”4
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`Qualcomm proposes the term be construed as “a circuit that manages power consumption
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`4 In the briefing, Apple proposed this term be construed as “hardware and/or software,”
`but at oral argument, Apple agreed that the PMU could not be software only. The proposed
`construction set out above incorporates this change.
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`8
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 8
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`

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`by automatically transitioning in hardware the performance states of a plurality [of]
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`performance domains.”
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`As with the term discussed immediately above, Qualcomm is attempting to import
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`limitations into the claim, i.e., that the PMU is a “circuit,” that it manages power
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`consumption by “automatically transitioning” the performance states “in hardware,” and
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`that it do so in a “plurality” of performance domains. The specification does not support
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`importing these limitations, and thus the Court adopts Apple’s proposed construction of
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`this term as “hardware and/or a combination of hardware and software that causes a
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`performance domain to transition to a performance state.”
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`3.
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`“Establish a … performance state”
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`The final term at issue here is “establish a … performance state.” This term appears
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`in claim 8 of the ‘812 Patent, claim 1 of the ‘216 Patent and claim 1 of the ‘196 Patent.
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`Apple proposes this term be construed according to its plain and ordinary meaning, or as
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`“set the … one or more performance characteristics to the appropriate values for the
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`performance state.” Qualcomm proposes the term be construed as “to cause the
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`performance domain to apply the performance state to that domain.”
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`The claim language, specifically, the word “establish,” is more consistent with
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`Apple’s use of “set” than Qualcomm’s use of “apply.” Qualcomm’s position that the PMU
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`must do more than simply “set” the performance state is correct, as the claim itself says the
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`PMU is also configured to “transition” a performance domain from one state to another.
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`However, the explicit requirement that the PMU be configured to make this transition is
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`separate from the “establish” requirement, which counsels against Qualcomm’s proposed
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`construction. Accordingly, the Court construes this term according to its plain and ordinary
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`meaning, consistent with the above discussion.
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`9
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 9
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`

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`Case 3:17-cv-01375-DMS-MDD Document 404 Filed 10/11/18 PageID.14939 Page 10 of 10
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`III.
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`CONCLUSION
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`For the reasons stated above, the disputed terms are interpreted as set forth in this
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`Order.
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`IT IS SO ORDERED.
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`Dated: October 11, 2018
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`10
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`17cv1375 DMS(MDD)
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`Qualcomm, Ex. 1013, Page 10
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`