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4 5 UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 7 NXP USA, INC., and NXP B.V., CASE NO. 2:20-cv-01503-JHC 8 Plaintiffs, ORDER RE: MOTION FOR 9 RECONSIDERATION v. 10 IMPINJ, INC., 11 Defendant. 12 13
14 I 15 INTRODUCTION 16 Before the Court is Impinj, Inc.’s motion for reconsideration (Dkt. # 393) of the Court’s 17 sua sponte order modifying its claim construction. For the reasons below, the Court DENIES the 18 motion for reconsideration. 19 II 20 BACKGROUND 21 On November 4, 2022, the Court issued a claim construction order. See Dkt. # 247. The 22 Court construed several terms in U.S. Patent Number 7,347,097 (“the ’097 Patent”). Among 23 those was the term “voltage-raising means that are arranged to raise the voltage value of the 24 1 control signal.” The Court construed the term to be a means-plus-function term. Dkt. # 247 at 2 33–39. The Court stated that the function was “raising the voltage value of the control signal,” 3 and the corresponding structure was “a charge pump or the float-based structure described at
4 2:43–48 of the ’097 Patent” and equivalents thereof. Id. 5 On March 6, 2023, the Court issued a sua sponte order modifying its construction of the 6 “voltage-raising means” term. Dkt. # 375. The Court explained that it had since gained a deeper 7 understanding of the technology at issue, additional insight about the way a person of ordinary 8 skill in the art (“POSITA”) would discuss circuit components, and an improved grasp of Federal 9 Circuit case law. Id. at 2, 11. The Court concluded that the term should not be construed as a 10 means-plus-function term, and should instead be construed to mean “a circuit that raises the 11 voltage value of the control signal.” Id. at 8–11. The Court explained that in the context of the 12 ’097 Patent, a POSITA would understand “voltage-raising means” to refer to a defined and finite
13 class of structures: voltage-raising circuit components. 14 Impinj moved for reconsideration (Dkt. # 393) of the Court’s sua sponte order modifying 15 its claim construction. The Court ordered NXP USA, Inc. and NXP B.V. (collectively, “NXP”) 16 to respond, which it did. Dkt. ## 396, 399. 17 III 18 DISCUSSION 19 The Court takes this opportunity to address several of the arguments raised by Impinj and 20 provide additional reasoning for its decision. 21 First, the Court recognized (and continues to recognize) that the presence of the word 22 “means” creates a rebuttable presumption that the term is subject to § 112, ¶ 6. But the Federal
23 Circuit has instructed that courts should not “blindly elevate[] form over substance” when 24 determining whether a claim term is subject to § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 1 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). “[T]he essential inquiry is not merely the presence 2 or absence of the word ‘means’ but whether the words of the claim are understood by persons of 3 ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.
4 Accordingly, while the Court gives due weight to the use of the word “means” within the term, 5 this is alone is not dispositive. 6 Second, when read in the context of the patent, the term “voltage-raising means” refers to 7 a particular class of definite structures: voltage-raising circuit components. As NXP’s response 8 illustrates (Dkt. # 399 at 7–8), other patents describe such voltage-raising circuit components 9 using similar language. For example, U.S. Patent Numbers 7,863,969, 7,020,453, and 9,608,566 10 each describe “voltage raising circuit[s]” as components of their inventions. See U.S. Patent No. 11 7,863,969 at 10:7–8 (describing “a device comprising a voltage raising circuit which raises the 12 first voltage to generate a second voltage higher than the first voltage”) (Dkt. # 400-1 at 13); U.S.
13 Patent No. 7,020,453 at 23:19–20 (describing a “voltage raising circuit which raises a power 14 source voltage”) (Dkt. # 400-2 at 28); U.S. Patent No. 9,608,566 at 1:40–42 (identifying various 15 examples of “a voltage raising circuit,” including a “charge pump circuit” and a “bootstrap 16 circuit”) (Dkt. # 400-3 at 12). And in the ’097 Patent itself, the Abstract uses the term “voltage- 17 raising stage,” suggesting that the term refers to a component (or stage) of a circuit. ’097 Patent 18 at Abstract (emphasis added). This suggests that a POSITA would interpret the term as a name 19 for a well-known and easily defined class of structures. It also suggests that the term “is used in 20 common parlance or by persons of skill in the pertinent art to designate structure, even if the 21 term covers a broad class of structures and even if the term identifies the structures by their 22 function.” Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017) (citation and
23 quotation marks omitted). 24 1 Granted, the claim term includes the word “means” and does not include the word 2 “circuit.” And the Court recognizes that patentees are generally presumed to have knowingly 3 chosen to use the word “means.” See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302
4 (Fed. Cir. 1999). But it is hard to imagine that, in the context of the ’097 Patent, a POSITA 5 would read “voltage-raising means” as anything other than a “voltage-raising circuit.” To ignore 6 the similarities between “voltage-raising means” and “voltage-raising circuits” would elevate 7 form over substance. Williamson, 792 F.3d at 1348; cf. Cole v. Kimberly-Clark Corp., 102 F.3d 8 524, 531 (Fed. Cir. 1996) (While “the drafter of claim 1 . . . was clearly enamored with the word 9 ‘means,’” the court nevertheless found “no reason to construe any of the claim language in claim 10 1 as reciting means-plus-function elements within the meaning of § 112, ¶ 6” because “the claim 11 drafter’s perfunctory addition of the word ‘means’ did nothing to diminish the precise structural 12 character of this element.”).
13 And the Federal Circuit has repeatedly held that “circuit” terms can convey sufficiently 14 definite structure. See Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 15 1348, 1364 (Fed. Cir. 2013) (“We have previously held on several occasions that the term 16 ‘circuit’ connotes structure.”); id. (explaining the Federal Circuit’s approach to circuit-based 17 terms).1 The Federal Circuit has explained that “the term ‘circuit’ with an appropriate identifier 18 such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some structural meaning to 19 one of ordinary skill in the art.” Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. 20 Cir. 2003). Here, the “adjectival qualification[],” Power Integrations, 711 F.3d at 1364 (citation 21 omitted) of “voltage-raising” sufficiently identifies a definite class of structures. This is 22
1 Impinj argues that this line of cases is inapposite because “voltage-raising means” does not 23 contain the word “circuit.” Dkt. # 393 at 14–15. While this argument is not without some merit, the Court nevertheless sees these cases as instructive, in part because in the context of the ’097 Patent, a 24 POSITA would have necessarily understood the term to refer only to a type of circuit. 1 particularly so when the claim describes “an input to the circuit” (the control voltage), “a 2 straightforward function” (voltage-raising), and “an output” (a raised control voltage) as do the 3 claims in the ’097 Patent. Id. at 1365.
4 Third, Impinj argues that the Court gave too much weight to the fact that there is a finite 5 number of voltage-raising circuit components. Dkt.
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4 5 UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 7 NXP USA, INC., and NXP B.V., CASE NO. 2:20-cv-01503-JHC 8 Plaintiffs, ORDER RE: MOTION FOR 9 RECONSIDERATION v. 10 IMPINJ, INC., 11 Defendant. 12 13
14 I 15 INTRODUCTION 16 Before the Court is Impinj, Inc.’s motion for reconsideration (Dkt. # 393) of the Court’s 17 sua sponte order modifying its claim construction. For the reasons below, the Court DENIES the 18 motion for reconsideration. 19 II 20 BACKGROUND 21 On November 4, 2022, the Court issued a claim construction order. See Dkt. # 247. The 22 Court construed several terms in U.S. Patent Number 7,347,097 (“the ’097 Patent”). Among 23 those was the term “voltage-raising means that are arranged to raise the voltage value of the 24 1 control signal.” The Court construed the term to be a means-plus-function term. Dkt. # 247 at 2 33–39. The Court stated that the function was “raising the voltage value of the control signal,” 3 and the corresponding structure was “a charge pump or the float-based structure described at
4 2:43–48 of the ’097 Patent” and equivalents thereof. Id. 5 On March 6, 2023, the Court issued a sua sponte order modifying its construction of the 6 “voltage-raising means” term. Dkt. # 375. The Court explained that it had since gained a deeper 7 understanding of the technology at issue, additional insight about the way a person of ordinary 8 skill in the art (“POSITA”) would discuss circuit components, and an improved grasp of Federal 9 Circuit case law. Id. at 2, 11. The Court concluded that the term should not be construed as a 10 means-plus-function term, and should instead be construed to mean “a circuit that raises the 11 voltage value of the control signal.” Id. at 8–11. The Court explained that in the context of the 12 ’097 Patent, a POSITA would understand “voltage-raising means” to refer to a defined and finite
13 class of structures: voltage-raising circuit components. 14 Impinj moved for reconsideration (Dkt. # 393) of the Court’s sua sponte order modifying 15 its claim construction. The Court ordered NXP USA, Inc. and NXP B.V. (collectively, “NXP”) 16 to respond, which it did. Dkt. ## 396, 399. 17 III 18 DISCUSSION 19 The Court takes this opportunity to address several of the arguments raised by Impinj and 20 provide additional reasoning for its decision. 21 First, the Court recognized (and continues to recognize) that the presence of the word 22 “means” creates a rebuttable presumption that the term is subject to § 112, ¶ 6. But the Federal
23 Circuit has instructed that courts should not “blindly elevate[] form over substance” when 24 determining whether a claim term is subject to § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 1 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). “[T]he essential inquiry is not merely the presence 2 or absence of the word ‘means’ but whether the words of the claim are understood by persons of 3 ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.
4 Accordingly, while the Court gives due weight to the use of the word “means” within the term, 5 this is alone is not dispositive. 6 Second, when read in the context of the patent, the term “voltage-raising means” refers to 7 a particular class of definite structures: voltage-raising circuit components. As NXP’s response 8 illustrates (Dkt. # 399 at 7–8), other patents describe such voltage-raising circuit components 9 using similar language. For example, U.S. Patent Numbers 7,863,969, 7,020,453, and 9,608,566 10 each describe “voltage raising circuit[s]” as components of their inventions. See U.S. Patent No. 11 7,863,969 at 10:7–8 (describing “a device comprising a voltage raising circuit which raises the 12 first voltage to generate a second voltage higher than the first voltage”) (Dkt. # 400-1 at 13); U.S.
13 Patent No. 7,020,453 at 23:19–20 (describing a “voltage raising circuit which raises a power 14 source voltage”) (Dkt. # 400-2 at 28); U.S. Patent No. 9,608,566 at 1:40–42 (identifying various 15 examples of “a voltage raising circuit,” including a “charge pump circuit” and a “bootstrap 16 circuit”) (Dkt. # 400-3 at 12). And in the ’097 Patent itself, the Abstract uses the term “voltage- 17 raising stage,” suggesting that the term refers to a component (or stage) of a circuit. ’097 Patent 18 at Abstract (emphasis added). This suggests that a POSITA would interpret the term as a name 19 for a well-known and easily defined class of structures. It also suggests that the term “is used in 20 common parlance or by persons of skill in the pertinent art to designate structure, even if the 21 term covers a broad class of structures and even if the term identifies the structures by their 22 function.” Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017) (citation and
23 quotation marks omitted). 24 1 Granted, the claim term includes the word “means” and does not include the word 2 “circuit.” And the Court recognizes that patentees are generally presumed to have knowingly 3 chosen to use the word “means.” See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302
4 (Fed. Cir. 1999). But it is hard to imagine that, in the context of the ’097 Patent, a POSITA 5 would read “voltage-raising means” as anything other than a “voltage-raising circuit.” To ignore 6 the similarities between “voltage-raising means” and “voltage-raising circuits” would elevate 7 form over substance. Williamson, 792 F.3d at 1348; cf. Cole v. Kimberly-Clark Corp., 102 F.3d 8 524, 531 (Fed. Cir. 1996) (While “the drafter of claim 1 . . . was clearly enamored with the word 9 ‘means,’” the court nevertheless found “no reason to construe any of the claim language in claim 10 1 as reciting means-plus-function elements within the meaning of § 112, ¶ 6” because “the claim 11 drafter’s perfunctory addition of the word ‘means’ did nothing to diminish the precise structural 12 character of this element.”).
13 And the Federal Circuit has repeatedly held that “circuit” terms can convey sufficiently 14 definite structure. See Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 15 1348, 1364 (Fed. Cir. 2013) (“We have previously held on several occasions that the term 16 ‘circuit’ connotes structure.”); id. (explaining the Federal Circuit’s approach to circuit-based 17 terms).1 The Federal Circuit has explained that “the term ‘circuit’ with an appropriate identifier 18 such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some structural meaning to 19 one of ordinary skill in the art.” Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. 20 Cir. 2003). Here, the “adjectival qualification[],” Power Integrations, 711 F.3d at 1364 (citation 21 omitted) of “voltage-raising” sufficiently identifies a definite class of structures. This is 22
1 Impinj argues that this line of cases is inapposite because “voltage-raising means” does not 23 contain the word “circuit.” Dkt. # 393 at 14–15. While this argument is not without some merit, the Court nevertheless sees these cases as instructive, in part because in the context of the ’097 Patent, a 24 POSITA would have necessarily understood the term to refer only to a type of circuit. 1 particularly so when the claim describes “an input to the circuit” (the control voltage), “a 2 straightforward function” (voltage-raising), and “an output” (a raised control voltage) as do the 3 claims in the ’097 Patent. Id. at 1365.
4 Third, Impinj argues that the Court gave too much weight to the fact that there is a finite 5 number of voltage-raising circuit components. Dkt. # 393 at 5–6. Impinj says that under any test 6 recognized by the Federal Circuit, the number of structures that fall within the confines of a term 7 does not determine whether a claim is governed by § 112, ¶ 6. Id. But the Court believes the 8 number of devices capable of performing the claimed function is relevant to whether the term 9 would have “an understood meaning in the art.” Rembrandt Data Techs., LP v. AOL, LLC, 641 10 F.3d 1331, 1341 (Fed. Cir. 2011). When only a finite and relatively small number of devices fit 11 the claim language, it is more likely that a POSITA would understand the metes and bounds of 12 the term and the class of structures it covers.
13 Fourth, NXP provided some expert testimony to support its conclusion. NXP’s expert, 14 Dr. Madisetti, opined that “[a] POSITA would understand the term to mean “a circuit that raises 15 the voltage value of the control signal,” and that the term refers to “specific structure” that was 16 “common in the art.” Dkt. # 137-4 at 41. Dr. Madisetti also explained that a “a POSITA would 17 have understood,” for example, “that voltage values could be raised using a charge pump or a 18 voltage multiplier that was well known in the art.” Id. To be sure, Dr. Madisetti’s declaration 19 was somewhat conclusory. But in light of Impinj’s failure to submit any competing expert 20 opinion, Dr. Madisetti’s opinion modestly helps rebut the presumption that the term is governed 21 by § 112, ¶ 6. 22 Fifth, Impinj argues that the Court’s decision disregards numerous district court and
23 Federal Circuit decisions construing voltage-related “means” terms. Dkt. # 393 at 8–9. But at 24 least some of the cited cases did not involve an actual dispute over the application of § 112, ¶ 6. 1 See Dkt. # 399 at 11–12. And while several of the cited decisions reach different conclusions 2 than the one the Court reaches today, the Court believes that its conclusion comfortably fits 3 within existing Federal Circuit case law. In Lighting Ballast Control LLC v. Philips Elecs. N.
4 Am. Corp., 790 F.3d 1329 (Fed. Cir. 2015), for example, the Federal Circuit affirmed the district 5 court’s conclusion that the term “voltage source means providing a constant or variable 6 magnitude DC voltage between the DC input terminals” was not governed by § 112, ¶ 6. Id. at 7 1334, 1338–39. In Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011), 8 the Federal Circuit held that “fractional rate encoding means” and “trellis encoding means” were 9 not subject to § 112, ¶ 6 based on expert testimony that the terms were used in the art and were 10 “self-descriptive to one of ordinary skill in the art.” Id. at 1341. And in TecSec, Inc. v. Int’l Bus. 11 Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013), the Federal Circuit held that the means-based 12 presumption was rebutted for the terms “system memory means” and “digital logic means.” Id.
13 at 1347. These cases support the Court’s conclusion that “voltage-raising means” is not 14 governed by § 112, ¶ 6. 15 Finally, Impinj says that the Court’s new construction is inconsistent with the 16 construction of the Patent Trials and Appeal Board (PTAB) during inter partes review of the 17 ’097 Patent. Dkt. # 393 at 10; Dkt. # 394-2 (PTAB decision). But the PTAB did not expressly 18 construe any term in the ’097 Patent, and instead considered validity based on the challenger’s 19 own proposed constructions. See Dkt. # 394-2 at 8 (“[W]e conclude that no claim term requires 20 express interpretation at this time to resolve any controversy in this proceeding.”). 21 The Court recognizes that there are plenty of strong counterarguments to its conclusion— 22 one need only look at the Court’s initial claim construction to find a few. And the arguments
23 that Impinj presents in its motion for reconsideration are reasonable. Based on the Court’s 24 understanding of the Patent, the technology, and the case law, it is a difficult question whether l “voltage-raising means” should be interpreted in under § 112, 6. But the Court nevertheless 2 concludes that the term is not governed by § 112, § 6, and that the “voltage-raising means” term 3 should instead be construed to mean “a circuit that raises the voltage value of the control 4 signal.” 5 IV 6 CONCLUSION 7 For the reasons above, the Court DENIES Impinj’s motion for reconsideration. Dkt. # 393. 8 Dated this 23rd day of March, 2023. Ohon Job. 4, ° john Chun 10 United States District Judge 11 12 13 14 15 16 17 18 19 20 21 22 23 ? In the alternative, Impinj asks the Court to “at least clarify the scope of the term.” Dkt. 393 at 24 16. The Court does not believe its construction requires further clarification. ORDER RE: MOTION FOR