Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 1 of 36
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`ACQIS, LLC,
`
`Plaintiff,
`
`C.A. No. 1:14-cv-13560-ADB
`
`v.
`
`EMC CORPORATION,
`
`Defendant.
`
`DEFENDANT EMC CORPORATION’S OPENING CLAIM CONSTRUCTION BRIEF
`
`Intel Corporation v. ACQIS LLC
`Intel Corp.'s Exhibit 1029
`Ex. 1029, Page 1
`
`

`

`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 2 of 36
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`Introduction ......................................................................................................................... 1
`
`Background ......................................................................................................................... 2
`
`Legal Standards for Claim Construction ............................................................................. 5
`
`A.
`
`B.
`
`Claim Construction Orders Are Non-Final and Subject to Change Until
`Trial ......................................................................................................................... 5
`
`Claims Must Be Construed in Light of the Teachings of the Patent
`Specification and the Prosecution History .............................................................. 7
`
`IV.
`
`“Peripheral Component Interconnect (PCI) Bus Transaction” ........................................... 9
`
`A.
`
`B.
`
`A “PCI bus transaction” requires a transaction ..................................................... 10
`
`A “PCI bus transaction” requires a PCI bus ......................................................... 11
`
`V.
`
`VI.
`
`VII.
`
`“Encoded serial bit stream of Peripheral Component Interconnect (PCI) bus
`transaction” and related terms ........................................................................................... 15
`
`“Communicating . . . PCI bus transaction” and related terms .......................................... 21
`
`Conclusion ........................................................................................................................ 25
`
`i
`
`Ex. 1029, Page 2
`
`

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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 3 of 36
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012)................................................................................7, 13, 17, 25
`
`Aylus Networks, Inc. v. Apple Inc.,
`No. 13-CV-04700-EMC, 2016 WL 270387 (N.D. Cal. Jan. 21, 2016) .....................................6
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)..............................................................................................7, 10
`
`Conoco, Inc. v. Energy & Envtl. Int’l, L.C.,
`460 F.3d 1349 (Fed. Cir. 2006)..................................................................................................6
`
`Embrex, Inc. v. Serv. Eng’g Corp.,
`216 F.3d 1343 (Fed. Cir. 2000)............................................................................................7, 10
`
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016)..................................................................................................7
`
`Evolutionary Intelligence, LLC v. Sprint Nextel Corp.,
`2014 WL 4802426 (N.D. Cal. Sept. 26, 2014) ..........................................................................6
`
`Facebook, Inc. v. Pragmatus AV, LLC,
`582 F. App’x 864 (Fed. Cir. 2014) ..........................................................................................11
`
`Gillespie v. Dywidag Sys. Int’l,
`501 F.3d 1285 (Fed. Cir. 2007)..................................................................................................8
`
`Honeywell Int’l, Inc. v. United States,
`609 F.3d 1292 (Fed. Cir. 2010)................................................................................................13
`
`Kroy IP Holdings, LLC v. Autozone, Inc.,
`No. 2:13-CV-888-WCB, 2015 WL 557123 (E.D. Tex. Feb. 10, 2015) ....................................6
`
`Lexington Luminance LLC v. Amazon.com Inc.,
`601 F. App’x 963 (Fed. Cir. 2015) ............................................................................................6
`
`MediaTek Inc. v. Freescale Semiconductor, Inc.,
`No. 11-CV-5341 YGR, 2014 WL 971765 (N.D. Cal. Mar. 5, 2014) ........................................6
`
`Moleculon Research Corp. v. CBS, Inc.,
`793 F.2d 1261 (Fed. Cir. 1986)................................................................................................15
`
`NorthPeak Wireless, LLC v. 3com Corp.,
`No. 2016-1477, 2016 WL 7448769 (Fed. Cir. Dec. 28, 2016) ........................................8, 9, 14
`
`ii
`
`Ex. 1029, Page 3
`
`

`

`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 4 of 36
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Pragmatus AV, LLC v. Yahoo! Inc.,
`No. C-13-1176, 2014 WL 1922081 (N.D. Cal. May 13, 2014) .................................................9
`
`Pressure Prods. Med. Supplies, Inc. v. Greatbatch, Ltd.,
`599 F.3d 1308 (Fed. Cir. 2010)..................................................................................................6
`
`Shire Dev., LLC v. Watson Pharm., Inc.,
`787 F.3d 1359 (Fed. Cir. 2015)..................................................................................................8
`
`Southwall Techs., Inc. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995)....................................................................................................8
`
`Springs Window Fashions L.P. v. Novo Indus., L.P.,
`323 F.3d 989 (Fed. Cir. 2003)..................................................................................8, 14, 19, 25
`
`Texas Inst. Inc. v. U.S. Int’l Trade Comm’n,
`988 F.2d 1165 (Fed. Cir. 1993)..................................................................................................7
`
`Trading Techs. Int’l, Inc. v. Open E Cry, LLC,
`728 F.3d 1309 (Fed. Cir. 2013)................................................................................................20
`
`Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016)..............................................................................................7, 8
`
`Regulations
`
`37 C.F.R. § 42.100(b) ....................................................................................................................10
`
`iii
`
`Ex. 1029, Page 4
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`

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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 5 of 36
`
`TABLE OF ABBREVIATIONS
`
`Abbreviation
`
`Document(s)
`
`' 119 patent
`
`' 171 patent
`
`' 185 patent
`
`U.S. Patent No. RE43 ,119 (issued Jan . 17, 2012) (D.I. 32-10)
`
`U.S. Patent No. RE43 ,171 (issued Feb. 7, 2012) (D.I. 32-7)
`
`U.S. Patent No. 6,216,185 (issued Apr. 10, 2001) (related to the
`asserted patents)
`
`' 185 Reexam,
`Resp. to OA
`
`Patent Owner's Response to Final Office Action in the reexamination of
`the ' 185 patent (May 3, 2011) (Ex. 17)
`
`'294 patent
`
`'416 patent
`
`'468 patent
`
`'487 patent
`
`' 624 patent
`
`'779 patent
`
`U.S. Patent No. RE41 ,294 (issued Apr. 27, 2010) (D.I. 32-5)
`
`U.S. Patent No. 7,363,416 (issued Apr. 22, 2008) (D.I. 32-1)
`
`U.S. Patent No. RE44,468 (issued Aug. 27, 2013) (D.I. 32-8)
`
`U.S. Patent No. 7,818,487 (issued Oct. 19, 2010) (D.I. 32-3)
`
`U.S. Patent No. 7,676,624 (issued Mar. 9, 2010) (D.I. 32-2)
`
`U.S. Patent No. 7,376,779 (issued May 20, 2008) (related to the
`asserted patents)
`
`'779 Reexam,
`Decision on Appeal
`
`Decision on Appeal to the Patent Trial and Appeal Board in the
`reexamination of the '779 patent (Oct. 28, 2013) (Ex. 18)
`
`'814 IPR
`
`IPR2014-01469 (challenging the '814 patent)
`
`'814 IPR Decision
`
`Final Written Decision, IPR2014-01469 (Mar. 8, 2016) (D.I. 126-5)
`
`'814 IPR Inst.
`
`'814 patent
`
`'873 IPR
`
`Decision, Institution of Inter Partes Review, IPR2014-01469
`(Mar. 11 , 2015) (D.I. 126-3)
`
`U.S. Patent No. RE42,814 (issued Oct. 4, 2011) (D.I. 32-6)
`
`IPR2014-01462 (challenging the '873 patent)
`
`'873 IPR Decision
`
`Final Written Decision, IPR2014-01462 (Mar. 8, 2016) (D.I. 126-4)
`
`'873 IPR Inst.
`
`'873 patent
`
`'961 patent
`
`'984 patent
`
`Decision, Institution of Inter Partes Review, IPR2014-01462
`(Mar. 11 , 2015) (D.I. 126-2)
`
`U.S. Patent No. 8,041,873 (issued Oct. 18, 2011) (D.I. 32-4)
`
`U.S. Patent No. RE41 ,961 (issued Nov. 23, 2010) (D.I. 32-11)
`
`U.S. Patent No. RE42,984 (issued Nov. 29, 2011) (D.I. 32-9)
`
`ACQIS '814 IPR
`Prehm. Resp.
`
`Patent Owner's Preliminary Response, IPR2014-01469 (Dec. 15, 2014)
`(Ex. 3)
`
`ACQIS '814 IPR
`Resp.
`
`Patent Owner's Response, IPR2014-01469 (June 11, 2015) (Ex. 5)
`
`lV
`
`Ex. 1029, Page 5
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`

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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 6 of 36
`
`Abbreviation
`
`ACQIS '814 IPR
`Suneply
`
`ACQIS '873 IPR
`Prehm. Resp.
`
`ACQIS '873 IPR
`Resp.
`
`ACQIS '873 IPR
`Suneply
`
`ACQIS CC Stmt.
`
`ACQIS EDTX
`Opening CC Br.
`
`Document(s)
`
`Patent Owner's Surreply, IPR2014-01469 (Nov. 6, 2015) (Ex. 11)
`
`Patent Owner's Preliminary Response, IPR2014-01462 (Dec. 15, 2014)
`(Ex. 2)
`
`Patent Owner's Response, IPR2014-01462 (June 11, 2015) (Ex. 4)
`
`Patent Owner's Surreply, IPR2014-01462 (Nov. 6, 2015) (Ex. 12)
`
`ACQIS, LLC 's Understanding of Claim Te1ms, ACQIS, LLC v. EMC
`Corp., No. 1:14-cv-13560 (D. Mass. Dec. 15, 2016) (Ex. 21)
`
`Plaintiff ACQIS LLC's P.R. 4-5(a) Opening Claim Constm ction Brief,
`D.I. 129, ACQIS LLC v. Alcatel-Lucent USA Inc. et al., No. 6:13-cv-638
`(E.D. Tex. Jan. 5, 201 5)
`
`Board
`
`Patent Trial and Appeal Board
`
`Bogae11s
`
`A. Bogae11s et al., RD24 Status Report: Application of the Scalable
`Coherent Interface to Data Acquisition at LHC (Oct. 1996) (at issue in
`the IPR of the '814 patent) (Ex. 16)
`
`D.I.
`
`Docket Index
`
`Deel.
`Declaration
`Dominguez Deel. 1 Declaration ofKathe1ine Dominguez in Suppo1i of EM C's Opening
`Claim Constm ction Brief, submitted concunently herewith
`
`EMC '814 IPR
`Reply
`
`EMC '873 IPR
`Reply
`
`Ex.
`
`Fig.
`
`Horst
`
`Petitioner's Reply, IPR2014-01 469 (Sept. 10, 2015) (Ex. 8)
`
`Petitioner's Reply, IPR2014-01462 (Sept. 10, 2015) (Ex. 7)
`
`Exhibit
`
`Figure
`
`Robe1i W. Horst, TNet: A Reliable System Area Network (Feb.
`1995) (at issue in the IPRs of both the '814 and '873 patents) (Ex. 15)
`
`IBM 2-14 Trial Tr.
`
`Trial transcript from Feb. 14, 2011, D.I. 687, ACQIS, LLC v. Appro Int '!,
`et al., No. 6:09-cv-148 (Ex. 19)
`
`IBM 2-15 Trial Tr.
`
`Trial transcript from Feb. 15, 2011, D.I. 689, ACQIS, LLC v. Appro Int '!,
`et al., No. 6:09-cv-148 (Ex. 20)
`
`1 Citations in this brief to "Ex. X" are citations to the exhibits attached to the Dominguez Deel.,
`unless othe1w ise noted.
`
`V
`
`Ex. 1029, Page 6
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`

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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 7 of 36
`
`Abbreviation
`
`Document(s)
`
`IPR
`
`inter part es review
`
`IPR Hr 'g Tr.
`
`Transcript of Oral Hearing before the Patent Trial and Appeal Board,
`IPR2014-01462, -01469 (Dec. 8, 201 5) (Ex. 13)
`
`Lindenstrnth Deel.
`
`Declaration of Volker Lindenstrnth {ACQIS technical expe1t) filed by
`ACQIS in IPR2014-01469 (June 10, 2015) (Ex. 6)
`
`Lindenstrnth Dep.
`Tr.
`
`Deposition transcript of Volker Lindenstrnth {ACQIS technical expert)
`in IPR2014-01462 and IPR2014-01469 {Aug. 27-28, 2015) (Exs. 9- 10)
`
`PCI
`
`Peripheral Component Interconnect
`
`PCI standard
`
`PCI Local Bus Specification, Revision 2.1 (June 1, 1995) (Ex. 14)
`
`PTO
`
`United States Patent and Trademark Office
`
`Young Decl.
`
`Declaration ofBrnce Young (EMC technical expe1t) in Suppoit of Inter
`Partes Review of U.S. Patent No. RE42,814 (Ex. 1)
`
`Vl
`
`Ex. 1029, Page 7
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`

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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 8 of 36
`
`TABLE OF EXHIBITS
`
`Exhibit
`
`Document
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`Exhibit 5
`
`Exhibit 6
`
`Exhibit 7
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`Exhibit 13
`
`Exce1pts of the Declaration of Bmce Young in Support of Inter Partes Review of
`U.S. Patent No. RE42,814 filed by EMC in IPR2014-01469 (Sept. 10, 2014).
`Patent Owner's Preliminary Response filed by ACQIS in IPR2014-01462 (Dec.
`15, 2014).
`Patent Owner's Preliminary Response filed by ACQIS in IPR2014-01469 (Dec.
`15, 2014).
`Patent Owner's Response filed by ACQIS in IPR2014-01462 (June 11 , 2015).
`Patent Owner's Response filed by ACQIS in IPR2014-01469 (June 11 , 2015).
`Exce1pts of the Declaration of Volker Lindenstmth filed by ACQIS in IPR2014-
`01469 (June 10, 2015).
`Petitioner's Reply filed by EMC in IPR2014-01462 (Sept. 10, 2015).
`Petitioner's Reply filed by EMC in IPR2014-01469 (Sept. 10, 2015).
`Exce1pts of the transcript of deposition of Volker Lindenstrnth in IPR2014-01462
`and IPR2014-01469 (Aug. 27, 2015).
`Exce1pts of the transcript of deposition of Volker Lindenstrnth in IPR2014-01462
`and IPR2014-01469 (Aug. 28, 2015).
`Exhibit 11 Patent Owner's Surreply, filed by ACQIS in IPR2014-01462 (Nov. 6, 2015).
`Exhibit 12 Patent Owner's Surreply, filed by ACQIS in IPR2014-01469 (Nov. 6, 2015).
`Exce1pts of the transcript of Oral Hearing before the Patent Trial and Appeal
`Board, IPR2014-01462, -01469 (Dec. 8, 2015).
`Exhibit 14 Exce1pts of the PCI Local Bus Specification, Revision 2.1 (June 1, 1995).
`Exhibit 15 Robe1i W. Horst, TNet: A Reliable System Area Network (Feb. 1995).
`Exhibit 16 A. Bogae1i s et al., RD24 Status Report: Application of the Scalable Coherent
`Interface to Data Acquisition at LHC (Oct. 1996).
`Patent Owner's Response to Final Office Action, filed by ACQIS in the ex parte
`reexamination of U.S. Patent No. 6,216,185 (May 3, 2011).
`Decision on Appeal in the inter partes reexamination of U.S. Patent No. 7,376,779
`(Oct. 28, 2013).
`Exce1pts of Transcript of Trial Afternoon Session, D .I. 687, A CQIS, LLC v. Appro
`Int'!, et al. , No. 6:09-cv-148 (Feb. 14, 2011).
`Exce1pts of Transcript of Trial Afternoon Session, D .I. 689, A CQIS, LLC v. Appro
`Int'!, et al. , No. 6:09-cv-148 (Feb. 15, 2011).
`ACQIS, LLC's Understanding of Claim Te1ms, ACQIS, LLC v. EMC Corp., No.
`1:14-cv-13560 (D. Mass. Dec. 15, 2016).
`
`Exhibit 17
`
`Exhibit 18
`
`Exhibit 19
`
`Exhibit 20
`
`Exhibit 21
`
`Vll
`
`Ex. 1029, Page 8
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`

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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 9 of 36
`
`
`
`I.
`
`Introduction
`
`Each of the three claim constructions EMC proposes is compelled by the plain language
`
`of the claims and uniform teachings of the patent specifications, as well as by the representations
`
`ACQIS made during the recent IPR proceedings. EMC confines this brief to three terms
`
`concerning which ACQIS made binding statements in the IPR that limit the scope of the claims.2
`
`At the outset, in order to broaden its patent claims beyond all recognition, ACQIS
`
`proposes constructions that are utterly divorced from, and contrary to, the plain language of the
`
`claims and the entirety of the specifications. For the phrase “PCI bus transaction,” for example,
`
`ACQIS actually proposes a construction that requires neither a “PCI bus” nor a “transaction.”
`
`Not only are ACQIS’s proposed constructions contrary to the plain language of the
`
`claims, they also are wholly inconsistent with—and legally precluded by—binding statements
`
`ACQIS made during the IPRs to preserve the validity of its patents. In granting the stay, this
`
`Court recognized that the IPRs, regardless of outcome, were likely to simplify the issues and
`
`affect the scope of the claims by virtue of positions ACQIS would take. That is exactly what
`
`happened: to distinguish prior art, ACQIS made explicit, binding statements regarding the scope
`
`of the claims, repeatedly advocating for narrow constructions of key terms. In so doing, ACQIS
`
`not only succeeded in saving its patents from the validity challenge in the PTO, but also obtained
`
`the significant benefit of EMC being estopped regarding certain prior art arguments in this court.
`
`Having avoided invalidity in the IPRs, ACQIS is bound by its statements regarding the scope of
`
`
`2 EMC confines this briefing to these three issues in light of the discussion with the Court
`regarding the impact of the IPRs on this case. As EMC explained, ACQIS’s representations
`concerning claim scope in the IPRs limit the scope of the claims in ways that directly affect
`infringement in this case, and EMC will address that promptly, including in summary judgment.
`Given the extent to which the constructions addressed herein are compelled by ACQIS’s
`statements and will simplify this case, EMC does not address any other claim construction issues
`at this time. EMC reserves its rights to do so, and maintains its objections to Judge Davis’s other
`constructions, and will address those terms as necessary in the future.
`
`
`
`1
`
`Ex. 1029, Page 9
`
`

`

`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 10 of 36
`
`
`
`the claims; those statements are now part of the intrinsic record and limit the scope of the claims.
`
`Incredibly, however, despite defeating the IPRs by urging narrow readings of its claims,
`
`ACQIS now asks this Court to adopt constructions totally at odds with its statements in the IPRs
`
`by blindly adopting the broader constructions Judge Davis entered before the IPRs. ACQIS’s
`
`proposal is irreconcilable with, and would entirely defeat the purpose of, the stay—which
`
`recognized that statements ACQIS made in the IPRs limit the scope of the claims. ACQIS’s
`
`proposal also is indefensible as a matter of law and fundamental fairness. ACQIS is improperly
`
`trying to define its claims one way (i.e., narrowly) in the IPRs to avoid invalidity and a totally
`
`different way (i.e., broadly) in this Court to prove infringement. Such an approach is the height
`
`of gamesmanship and legally untenable. ACQIS’s statements in the IPRs (made long after Judge
`
`Davis’s claim construction order) are now part of the intrinsic record and limit the scope of the
`
`claims in this case as a matter of law, as the Federal Circuit has repeatedly and unequivocally
`
`held. ACQIS’s binding statements to the PTO compel the constructions EMC proposes here.
`
`II.
`
`Background
`
`ACQIS currently accuses EMC of infringing 22 claims across 11 patents. See Appendix
`
`A (setting forth each asserted claim). The patents fall into three inter-related families: (1) the
`
`’873 Family: ’416, ’624, ’487, and ’873 patents; (2) the ’814 Family: ’294, ’814, ’119, and ’961
`
`patents; and (3) the ’468 Family: ’171, ’984, and ’468 patents. These patents descend from
`
`related applications filed by the same inventor, and describe virtually identical subject matter.3
`
`The patents are all directed to various aspects of a “modular” computer system, i.e., a
`
`system in which different computing components can be readily inserted or removed from a
`
`“console” that houses them. The patents disclose a module with a CPU and memory that inserts
`
`
`3 See D.I. 102 at 7–8. EMC will cite to a representative patent from each family, specifically the
`’873, ’814, and ’468 patents.
`
`
`
`2
`
`Ex. 1029, Page 10
`
`

`

`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 11 of 36
`
`
`
`into a console having all of the necessary peripheral devices (e.g., monitor, keyboard, mouse,
`
`modem, etc.) “to form a functional computer.” See ’814 patent at 3:28–29, 6:19–34, 7:48–60;
`
`see also ’873 patent at 9:41–10:16; ’468 patent at 7:57–8:14. The benefit of this arrangement,
`
`according to the patents, is that a user can carry the same module to separate consoles (say, at
`
`home and at work), thus “provid[ing] reduced user investment in redundant computer
`
`components.” ’814 patent at 3:16–19.
`
`ACQIS did not invent modular computing. Young Decl. (Ex. 1), ¶¶ 53, 102–103, 110;
`
`IBM 2-14 Trial Tr. (Ex. 19) at 133:10–136:14. ACQIS’s invention was directed at a particular
`
`improvement on the interface between the existing modules and consoles, i.e., an improvement
`
`in the way modules and consoles communicated with each other. Id. at 136:20–137:8. At the
`
`time of the invention in the late nineties, many computing devices, including existing modules
`
`and consoles, relied on a well-known industry standard architecture known as the “PCI bus”
`
`architecture. See IBM 2-15 Trial Tr. (Ex. 20) at 148:11–150:2; Lindenstruth Decl. (Ex. 6), ¶¶
`
`59–60, 79. The characteristics of a PCI bus and the requirements for communications on the bus
`
`are defined by the PCI Local Bus Specification (“PCI standard”). See id. ¶¶ 21, 59. The PCI
`
`standard is referenced in every patent, and is incorporated in every asserted claim. See, e.g., ’873
`
`patent at 3:14; Appendix A; see also ACQIS ’814 IPR Prelim. Resp. (Ex. 3) at 7–9; D.I. 71 at 6.
`
`A PCI bus is a set of circuitry (i.e., wires) inside a computing device (e.g., module and/or
`
`console) that interconnects the different computing components together, and allows them to
`
`communicate with each other. Lindenstruth Decl. (Ex. 6), ¶¶ 43, 59–60. One aspect of the PCI
`
`standard is that signals sent over a PCI bus are sent in what is known as a “parallel” format. Id.
`
`¶¶ 54, 59–60, 62. The format is referred to as “parallel” because the wires are next to each
`
`other, and data is sent down the parallel wires at the same time. Id.; Young Decl. (Ex. 1), ¶ 25.
`
`
`
`3
`
`Ex. 1029, Page 11
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`

`

`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 12 of 36
`
`
`
`ACQIS identified a perceived problem with using this existing parallel PCI architecture
`
`in a modular computer system. Because both modules and the consoles used PCI buses that
`
`transferred data in parallel format, prior art systems often used parallel interface connectors to
`
`connect these modules and consoles together. See ’873 patent at 3:11-21. According to ACQIS,
`
`the parallel interface connectors had certain drawbacks, particularly in a modular computer
`
`system, as these connectors were costly, bulky, cumbersome to handle, and, ultimately, too slow.
`
`See, e.g., id. at 3:32–67; ’814 patent at 19:46–62; ’468 patent at 17:31–47.
`
`ACQIS knew that it had to work with the underlying parallel standard PCI architecture
`
`because it was prevalent in existing modules and consoles. According to ACQIS, because “PCI
`
`had been widely adopted” and the industry “would not easily abandon it,” it was necessary to
`
`“develop[] a system to speed up PCI transactions that was completely compatible with existing
`
`peripheral devices.” ACQIS ’814 IPR Resp. (Ex. 5) at 3.
`
`ACQIS’s idea was to use the modules and consoles incorporating standard PCI hardware,
`
`but to use a smaller, faster interface between those modules and consoles. According to ACQIS,
`
`its solution was an interface that would take the PCI signal from its original parallel form and
`
`convert it into what is known as “serial” form, and send the signal down a serial (not parallel)
`
`connector. See ACQIS ’814 IPR Resp. (Ex. 5) at 3–6. The format is referred to as “serial”
`
`because, unlike with the parallel format, data sent down the serial connector is not sent down all
`
`at once, but rather a piece at a time. See Lindenstruth Decl. (Ex. 6), ¶ 56. As ACQIS explained
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`in the IPR: “one key to the invention was to serialize the otherwise parallel PCI bus transactions
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`to increase communications speeds.” ACQIS ’814 IPR Resp. (Ex. 5) at 3. According to ACQIS,
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`converting the parallel PCI signals into serial form and transmitting the serial signals over the
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`serial connectors was advantageous because the connectors, with fewer conductive lines, were
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`4
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`Ex. 1029, Page 12
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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 13 of 36
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`generally faster than parallel connectors. ’873 patent at 5:49–62; Lindenstruth Decl. (Ex. 6) ¶ 58.
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`Importantly, because the existing modules and consoles connected by ACQIS’s new
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`serial interface still themselves used the existing parallel PCI architecture, those modules and
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`consoles still needed to receive parallel signals in accordance with the PCI standard. ACQIS
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`’814 IPR Resp. (Ex. 5) at 2–3, 8–10. Accordingly, ACQIS explained that another key aspect of
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`the claimed invention was that all of the data required by the PCI industry standard—that is, all
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`of the data that had been in parallel form and then converted to serial—would have to be
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`preserved during communication. See id.; see also IPR Hr’g Tr. (Ex. 13) at 31:18–32:4. In this
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`way, the serial transmission could be converted back to fully compliant parallel PCI signals that
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`would be understood at the receiving end, “so that the serialized communications were
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`compatible with existing peripheral devices.” ACQIS ’814 IPR Resp. (Ex. 5) at 3, 10.
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`Otherwise, these devices would simply not understand each other. See id.
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`In sum, ACQIS purported to provide a new interface that (1) connects modules and
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`consoles that rely on prior art PCI architectures; (2) converts the parallel PCI signals they
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`produce into serial form for transmission over a serial connector; and (3) preserves all data
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`required by the PCI standard during the communication process. EMC’s three proposed
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`constructions properly capture these core aspects of the invention.
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`III. Legal Standards for Claim Construction
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`Claim Construction Orders Are Non-Final and Subject to Change Until Trial
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`A.
`In response to EMC’s request that this Court construe certain disputed terms, ACQIS
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`contends that “the claim terms EMC proposes have already been construed by the Court, and
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`those constructions should not be disturbed.” ACQIS CC Stmt. (Ex. 21) at 1. ACQIS is
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`incorrect on both counts: this Court has not yet construed any claim terms, and there have been
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`critical developments during the IPRs, after the prior court issued its claim construction order,
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`5
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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 14 of 36
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`that require that certain claim constructions be adopted by this Court.
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`Even if one were to ignore the IPRs entirely, ACQIS would be wrong to suggest that the
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`Eastern District of Texas Markman Order controls in this case. Judge Davis himself
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`acknowledged that this Court “will not be bound by [his] Markman opinion.” D.I. 44 at 12–13.
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`In fact, pretrial claim construction orders are non-final by definition, as “the final determination
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`of the construction of any claim occurs at the close of trial and manifests itself in the form of
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`jury instructions.” MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-CV-5341 YGR,
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`2014 WL 971765, at *2 (N.D. Cal. Mar. 5, 2014) (emphasis added). The Federal Circuit has
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`recognized that a district court will often “revisit[] and alter[] its interpretation of the claim
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`terms” as the case develops and the court’s “understanding of the technology evolves.” Pressure
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`Prods. Med. Supplies, Inc. v. Greatbatch, Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2010); Conoco,
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`Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006).4
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`Moreover, claim construction not only can but must be revisited when there is an
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`intervening event, such as an IPR, that alters the intrinsic evidence. See Lexington Luminance
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`LLC v. Amazon.com Inc., 601 F. App’x 963, 970 n.5 (Fed. Cir. 2015) (instructing district court,
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`on remand, “to determine whether the meanings of the disputed claim limitations have been
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`altered by the [intervening] reexamination history” and explaining that “on remand, the district
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`court may supplement its claim constructions consistent with the controlling appellate mandates
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`as the case moves forward”); Aylus Networks, Inc. v. Apple Inc., No. 13-CV-04700-EMC, 2016
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`WL 270387, at *5 (N.D. Cal. Jan. 21, 2016); Evolutionary Intelligence, LLC v. Sprint Nextel
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`Corp., 2014 WL 4802426, at *4 (N.D. Cal. Sept. 26, 2014) (“The IPR proceedings will also add
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`4 See also, e.g., Kroy IP Holdings, LLC v. Autozone, Inc., No. 2:13-CV-888-WCB, 2015 WL
`557123, at *2 (E.D. Tex. Feb. 10, 2015) (“[C]laim construction can be, and often is, an ongoing
`process that leads to refinements . . . .”).
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`
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`6
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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 15 of 36
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`to the ’536 Patent’s prosecution history. Prosecution history is an important part of the intrinsic
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`record relevant to claim construction.”). Here, ACQIS not only altered the intrinsic record but,
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`as discussed below, did so in a way that is irreconcilable with the prior court’s constructions that
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`ACQIS would still have this Court adopt.
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`B.
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`Claims Must Be Construed in Light of the Teachings of the Patent
`Specification and the Prosecution History
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`The claim construction inquiry necessarily begins “by considering the language of the
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`claims themselves.” Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp., 811 F.3d
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`1359, 1362 (Fed. Cir. 2016). That is because the object of claim construction is “to understand
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`and explain, but not to change, the scope of the claims.” Embrex, Inc. v. Serv. Eng’g Corp., 216
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`F.3d 1343, 1347 (Fed. Cir. 2000) (emphasis added). Accordingly, the Federal Circuit frequently
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`cautions against any construction that renders words in a claim meaningless or “mere
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`surplusage” and requires that “claims are interpreted with an eye toward giving effect to all terms
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`in the claim.” Texas Inst. Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir.
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`1993); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950–52 (Fed. Cir. 2006).
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`In determining the meaning of claim words, the Court does not work in a vacuum, but
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`instead must use the specification as a guide to determine the terms’ patent-specific meanings.
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`As the Federal Circuit has recently reiterated, “[t]he ordinary meaning of a claim term is not ‘the
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`meaning of the term in the abstract,’” but rather “its meaning to the ordinary artisan after reading
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`the entire patent.” Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1320 (Fed.
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`Cir. 2016). Accordingly, claim terms can and should be limited based on the overall teachings of
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`the specification and the understanding conveyed to one of skill in the art by the embodiments
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`disclosed. See, e.g., In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012)
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`(construing an “electrochemical sensor” to exclude external wires because “every embodiment
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`7
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`Ex. 1029, Page 15
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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 16 of 36
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`disclosed in the specification shows an electrochemical sensor without external cables or wires”);
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`Trustees of Columbia, 811 F.3d at 1364.
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`Even where the claim language and specification would not in themselves compel a
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`narrow construction, the Court must consider the prosecution history, which can alone preclude a
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`broad construction. Indeed, the Federal Circuit has long held that when a patentee makes
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`statements before the PTO to distinguish prior art from the claims, those statements are binding
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`at claim construction, precluding broader constructions. For example, in Springs Window
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`Fashions L.P. v. Novo Industries, L.P., 323 F.3d 989 (Fed. Cir. 2003), the Federal Circuit held
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`that the prosecution history required an additional limitation, not found expressly in the claims,
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`because the patentee had argued that limitation was required in order to overcome a prior art
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`rejection. Id. at 993–94. Accordingly, the patentee had disclaimed the broader scope that would
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`otherwise have been permitted by the claims and specification. See also, e.g., Southwall Techs.,
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`Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“Claims may not be construed one
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`way in order to obtain their allowance and in a different way against accused infringers.”);
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`Gillespie v. Dywidag Sys. Int’l, 501 F.3d 1285, 1291 (Fed. Cir. 2007) (“The patentee is held to
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`what he declares during the prosecution of his patent.”). Finally, even where a statement made
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`during prosecution does not rise to the level of a binding “clear and unequivocal” disclaimer of
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`claim scope, that statement may still provide compelling intrinsic record support that favors a
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`narrower claim construction. See, e.g., NorthPeak Wireless, LLC v. 3com Corp., No. 2016-1477,
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`2016 WL 7448769, at *3 (Fed. Cir. Dec. 28, 2016); Shire Dev., LLC v. Watson Pharm., Inc., 787
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`F.3d 1359, 1366 (Fed. Cir. 2015).
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`Post-issuance proceedings, including IPRs, are part of the prosecution history and can
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`give rise to disclaimer or otherwise conclusively establish the meaning of a claim term. See, e.g.,
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`8
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`Ex. 1029, Page 16
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`Case 1:14-cv-13560-ADB Document 185 Filed 01/20/17 Page 17 of 36
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`NorthPeak, 2016 WL 7448769, at *4 ("Even assuming the foll scope of the plain meaning of
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`' register ' were broader than that whi